Poly-Gel L.L.C.v.Gelli Arts LLC

Trademark Trial and Appeal Board

Jun 26, 2018

No. 92066084 (T.T.A.B. Jun. 26, 2018)

Mailed: June 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Poly-Gel L.L.C.
v.
Gelli Arts LLC
_____

Cancellation No. 92066084
_____

Edwin D. Schindler for Poly-Gel L.L.C.

Michelle Browning Coughlin and Matthew A. Williams of Wyatt Tarrant & Combs,
LLP for Gelli Arts LLC
_____

Before Wolfson, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Respondent Gelli Arts LLC owns Registration No. 4209019 for the mark GELLI
ARTS in standard characters (“ARTS” disclaimed) for “printing plates.”1 Petitioner
Poly-Gel L.L.C. filed a petition to cancel the registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1). Respondent denied the salient allegations in

1 Issued September 18, 2012; Section 8 affidavit accepted.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92066084
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the complaint and asserted the affirmative defenses of unclean hands, estoppel and
laches. Respondent did not pursue its alleged affirmative defenses, which are
accordingly waived and will be given no further consideration. Miller v. Miller, 105
USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. American Wine
Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
On February 7, 2018, Petitioner filed a motion for summary judgment on its claim
of descriptiveness. In its response, Respondent cross-moved for summary judgment
in its favor on the claim. Following Petitioner’s reply in support of its motion and in
response to Respondent’s cross-motion, the Board convened a telephone conference
with the parties to discuss expediting disposition of the case. The parties consented
to, and the Board approved, disposition through the Board’s Accelerated Case
Resolution (ACR) procedure.2 Specifically, the parties agreed to “forego trial and oral
hearings and [to] submit the case to the Board through ACR briefing in a cross motion
for summary judgment format.”3 The parties further agreed that “the Board may
resolve genuine disputes of material fact and issue a final ruling based on the parties’
ACR submissions.”4
I. The ACR Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Respondent’s challenged registration.5 In addition, Petitioner introduced,

2 Board Order dated March 9, 2018; 17 TTABVUE 1.
3 Id.
4 Id. at 2.
5 Petitioner needlessly attached to its amended petition for cancellation a copy of
Respondent’s subject registration and entries from the file history of the registration, which
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under the testimony declarations of Petitioner’s counsel Edwin D. Schindler (13
TTABVUE 14 and 16 TTABVUE 14), the following evidence with its summary
judgment/ACR briefs:
• A copy of Respondent’s GELLI ARTS registration, Reg. No. 4209019 and
the supporting specimen;6 a copy of an Office Action dated February 20,
2012 in Reg. No. 4209019 (including a copy of the definition of “arts” from
COLLINS ENGLISH DICTIONARY);7 and a copy of Gelli Arts LLC’s response
(dated March 16, 2012) to the February 20, 2012 Office Action in Reg. No.
4209019;8 and
• A copy of an Internet page from Respondent’s website at
http://www.gelliarts.com dated March 1, 2018.9

are automatically of record. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b); see Cold War
Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir.
2009) (the entire file of a subject registration, including any evidence made of record during
prosecution of the underlying application, is part of the record in a cancellation proceeding
without any action of the parties). As for the other material attached to Petitioner’s pleading,
none is automatically of record and it has only been considered to the extent it was otherwise
properly introduced as an exhibit to Petitioner’s summary judgment/ACR briefs. Trademark
Rule 2.122(c), 37 C.F.R. § 2.122(c); see also Trademark Board Manual of Procedure (“TBMP”)
§ 317 (June 2017) and authorities cited in that section.
6 13 TTABVUE 17, Exhibit 1.
7 Id. at 25-31, Exhibit 3.
8 Id. at 33-41, Exhibit 4. As noted supra at n.5, Petitioner need not have submitted copies of
Respondent’s subject registration or entries from the file history of the registration. On the
other hand, introduction of the specimen filed in the application that issued as Respondent’s
registration was proper. Specimens in an application or registration file are not evidence in
an inter partes proceeding unless the specimens are identified and introduced in evidence as
exhibits during the testimony period (or, as here, with an ACR brief). Trademark Rule
2.122(b)(2), 37 C.F.R. § 2.122(b)(2); see also TBMP §§ 704.03(a) and 704.04 and authorities
cited in those sections.
9 16 TTABVUE 17, Exhibit 1.
Cancellation No. 92066084
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Respondent introduced, under the testimony declarations of Respondent’s counsel
Michelle Browning Coughlin (14 TTABVUE 25) and Lou Ann Gleason, Respondent’s
co-owner (14 TTABVUE 46), the following evidence with its summary judgment/ACR
briefs:10
• A copy of the definition of “monoprint” from the Merriam-Webster Online
Dictionary;11
• A screenshot from HARBORVIEW ARTS, “How to: Gelatin Printing,” at
www.harborview-arts.com/kdg/how-to-gelatin-printing/;12
• A screenshot taken from https://smartartbox.com/products/december-2017-
gelli-printing;13
• Screenshots from four dictionaries showing that the term GELLI was not
defined therein; at:
1) https://www.merriam-webster.com/dictionary/gelli (MERRIAM-
WEBSTER ONLINE DICTIONARY, 2018);
2) https://dictionary.cambridge.org/us/spellcheck/english/?q=gelli
(CAMBRIDGE ONLINE DICTIONARY, 2018);
3) https://en.oxforddictionaries.com/search?utf8=%E2%9C%93&filt
er=dictionary&query=gelli (ENGLISH OXFORD LIVING
DICTIONARIES, 2018); and

10 Respondent, in its brief, refers to Petitioner’s website https://gelpress.com/ and invites us
to review it via a link, 14 TTABVUE 4. However, Respondent’s evidence does not include any
actual pages from the website. The Board does not consider websites for which only links are
provided. In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017) (“Because the
information displayed at a link’s Internet address can be changed or deleted, merely
providing a link to a website is insufficient to make information from that site of record.”); In
re Planalytics, 70 USPQ2d 1453, 1458 (TTAB 2004) (providing a link to a website does not
suffice to put information in the record because of the transitory nature of the information
available through the link). We have not considered the website.
11 14 TTABVUE 29, Attachment 1.
12 Id. at 31, Attachment 2.
13 Id. at 33, Attachment 3.
Cancellation No. 92066084
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4) https://www.macmillandictionary.com/us/spellcheck/american/?q
=gelli (MACMILLAN DICTIONARY, 2018).14

• Screenshots showing third-party use of the terms “gelatin” and “gel printing
plates”;15
• Copies of TSDR printouts and a copy of the registration certificate for Reg. No.
4209019;16
• Copies of registration certificates for Respondent’s registrations for:
o GELLI Reg. No. 4707001;17
o Reg. No. 4707002;18
o GELLI ARTS Reg. No. 4863591;19 and
o Foreign registrations for GELLI ARTS.20

14 Id. at 35-38, Attachment 4. We discount the entry from the ENGLISH OXFORD LIVING
DICTIONARY, as the search query indicates that the results are from a “British & World
English” version of the source material, which does not necessarily evidence perceptions of
United States consumers. See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1592
n.4 (TTAB 2018) (citing In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 n.18
(TTAB 2014) (finding definitions from the British version of Collins Dictionary to be “of little
or no probative value”)).
15 Id. at 40-45, Attachment 5.
16 Id. at 48-52 and 53 (duplicate). Again, this registration is of record by operation of
Trademark Rule 2.122(b)(2) and need not have been separately introduced. Moreover, there
is no need to submit duplicate copies of evidence. Once submitted, evidence may be referred
to by either party for any purpose and resubmitting the same evidence multiple times wastes
valuable Board resources. Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a); see also Nazon v.
Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB 2016) (“Once evidence is properly of record, it
may be relied on by any party for any purpose.”).
17 Id. at 54 and 18 TTABVUE 12, Exhibit 1 (duplicate).
18 Id. at 55-56.
19 Id. at 57.
20 Id. at 58-63. The foreign registration certificates, while properly of record, are of no
probative value. Cf. In re Hag Aktiengesellschaft, 155 USPQ 598, 599 (TTAB 1967) (“The
foreign registrations ... are not persuasive on the issue before us [whether KABA is generic]
Cancellation No. 92066084
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• Copies of TSDR printouts for Petitioner’s GELL-E ROLL mark, Serial No.
87080531;21
• Copies of registration certificates for Petitioner’s marks:
o GEL-E-ROLL Reg. No. 5291267;
o GELPRESS Reg. No. 5042696; and
o GELSMART Reg. No. 4420218. 22
• Copies of third-party applications and registrations for the marks:
o Reg. No. 4909417;
o DON’T BE GELLY Serial No. 87563838;
o GELLY ROLL Reg. No. 5100405;
o JELLY DONUT Reg. No. 4466209;
o JELLY PEDI Reg. No. 3658871;
o JELLY BELLY Reg. No. 4143411; and
o Reg. No. 4143412.23
• Advertising showing Petitioner’s use of the GELPRESS mark.24

because it has not been demonstrated that the criteria for registration in these countries
involve examination systems in any way analogous to that of this country; and manifestly
applicant’s right of registration must be determined under the provisions of the Lanham Act
as interpreted by the various judicial tribunals in this country.”).
21 Id. at 63-65.
22 Id. at 66-69.
23 Id. at 70-78.
24 Id. at 79.
Cancellation No. 92066084
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Respondent also introduced, with its March 20, 2018 Reply Brief, a copy of an
Office Action dated January 23, 2018, from Petitioner’s trademark application for the
mark GELL-E ROLL, Serial No. 87080531.25 Respondent further introduced an
International Trademark Association (INTA) “Fact Sheets Introduction to
Trademarks”26 printed from the Internet with its Reply Brief. We have considered
the Office Action as an official document, see Trademark Rule 2.122(e)(1), and the
INTA Fact Sheet as having been submitted in compliance with Trademark Rule
2.122(e)(2) and Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010) (holding document obtained from the Internet admissible if it identifies its date
of publication or date that it was accessed and printed, and its source (e.g., the
URL)).27 However, we do not consider the page from a Google search providing a
definition of the term “floccinaucinihilipilification”28 as the document is not self-
authenticating in nature, was not submitted in accordance with Safer Inc., and was
not properly authenticated by an affidavit or declaration pursuant to Fed. R. Civ. P.
56(c)(4).

25 18 TTABVUE 19-25, Exhibit 4.
26 Id. at 14-15, Exhibit 2.
27 The web address of the INTA fact sheet was provided in Respondent’s Reply Brief, and the
document bears a copyright notice of 2018. Safer Inc., 94 USPQ2d at 1039. We consider the
exhibit for what it shows on its face (and not for the truth of any matter stated therein). Id.
at 1037 n.14.
28 Id. at 17, Exhibit 3.
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II. Standing
Petitioner has standing because its pleaded application for the mark GELL-E
ROLL for “painting tools, namely, paint brushes and textured rollers; gel printing
plates; gel plate accessories, namely, gel plate storage containers made of paper or
cardboard”29 has been refused registration on the basis of Respondent’s registration.
See Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014) (plaintiff’s application refused based on defendant’s registrations);
Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012)
(petitioner’s intent-to-use application refused based on respondent’s registrations);
ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (petitioner’s
pending application refused registration based on respondent’s registration).30
III. Whether GELLI ARTS is Merely Descriptive
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor Development, 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and

29 Serial No. 87080531, filed on June 22, 2016, on the basis of Petitioner’s (as applicant)
allegation of bona fide intent to use the mark in commerce under Trademark Act Section 1(b),
15 USC § 1051(b).
30 See TSDR copy of Petitioner’s GELL-E ROLL application that indicates the application has
been refused, 14 TTABVUE 63-65, and copy of the Final Office Action refusing the application
on the basis of likelihood of confusion with Respondent’s GELLI ARTS registration, 18
TTABVUE 19-25.
Cancellation No. 92066084
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every specific feature of the goods in order to be considered merely descriptive; rather,
it is sufficient that the mark describes one significant attribute, function or property
of the goods. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Petitioner argues that “[t]he term ‘Gelli’ is derived from the term ‘Gel’ and is
therefore ‘merely descriptive’ of Gelli Arts’ ‘gel printing plates’ goods.”31 Petitioner
further argues that Respondent “can claim no exclusive rights to the ‘merely
descriptive’ terms ‘Gel’ or ‘Gelli’ in the marketing of ‘gel printing plates.’”32 Petitioner
points out that “Arts” has already been disclaimed, and asserts that because “Gelli”
is “an unregistrable component which extends a nonregistrable meaning to the
registered trademark of U.S. Trademark Registration No. 4,209,019, as a whole, …
the purported ‘Gelli Arts’ ‘trademark’ of U.S. Trademark Registration No. 4,209,019
is unregistrable in its entirety, should not have been registered, and should therefore
be cancelled.”33
Respondent counters that its mark GELLI ARTS is inherently distinctive, does
not appear as a term in any of the dictionaries searched by Respondent, has appeared
in the form GELLI or JELLY in third-party registrations covering goods that contain
“gel” without a disclaimer, as well as in registrations held by Petitioner for similar

31 Petition to Cancel ¶ 5; 6 TTABVUE 9.
32 Id. ¶ 6.
33 Id. ¶ 7.
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goods, and has not been used by third parties to describe gel or gelatin printing or
monoprinting using gel or gelatin printing plates. In sum, Respondent argues that
Petitioner “has provided no evidence and proffered no supportable argument that the
Respondent’s GELLI ARTS mark is ‘merely descriptive.’ The GELLI ARTS mark is
inherently distinctive and should remain registered on the Principal Register.”34
The registration on the Principal Register of Respondent’s GELLI ARTS is prima
facie evidence of the validity of that registration, Trademark Act §7(b), 15 U.S.C.
§1057(b), “and that includes the presumption that the mark subject thereof is not
merely descriptive of or generic in relation to the goods.” Editorial Am., S.A. v.
Gruner + Jahr AG & Co., 213 USPQ 498, 504 (TTAB 1982). Petitioner’s burden is to
overcome this presumption by a preponderance of the evidence. Id.; see also Cold War
Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628
(Fed. Cir. 2009); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1848 (Fed. Cir. 2000); Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892
F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989); Massey Junior College v. Fashion
Institute of Technology, 181 USPQ 272 (CCPA 1974).
The parties do not dispute that the term “ARTS” is descriptive of Respondent’s
printing plates, given that they are designed for use in creating artwork. In its
attempt to prove that GELLI ARTS is also descriptive of gel printing plates,
Petitioner relies on the specimen of use submitted with Respondent’s registration and

34 14 TTABVUE 23.
Cancellation No. 92066084
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an Internet page from Respondent’s website at http://www.gelliarts.com. These are
reproduced below.
A. Specimen of use
Respondent’s specimen contains the wording GELLI ARTS GEL PRINTING
PLATE and “For monoprinting without a press!” on the front of the packaging. On
the back, the words GELLI ARTS GEL PRINTING PLATE also appear, along with
illustrated instructions on how to use the printing plate to create a work of art.
Specifically, the instructions use the word “Gel” in the following sentence: “Remove
clear film and apply paint to the Gel Printing Plate.”
FRONT:
35

35 13 TTABVUE 20.
Cancellation No. 92066084
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BACK:
36

B. Web page
Respondent’s web page uses the term GELLI ARTS as a trademark, following it
with the registration symbol in the following phrases: “New Gelli Arts® Kits” and
“Award Winning Gelli Arts® Printing Plates in….” Respondent also uses the phrase
“Join the Gelli Conversation!” on the web page. None of these usages suggest that the
term GELLI is merely descriptive of a gel printing plate. Petitioner argues, however,

36 13 TTABVUE 21.
Cancellation No. 92066084
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that in describing the product in text on the website, Respondent uses the term
GELLI descriptively. The text reads:
We love gelatin printing and we’ve developed a better way
to do it! Our Gel Printing Plate looks and feels like gelatin,
but is durable, reusable and stores at room temperature.
It’s easy to clean and always ready for printing.
Monoprinting on a Gelli plate is simple and fun. The
gratification is immediate, and the prints are too cool!
37
While our determination might very well be different on a different record,
Petitioner’s limited evidence of descriptiveness is insufficient to establish the claim.
Even if we were to agree with Petitioner and assume that the term GELLI is derived

37 16 TTABVUE 17.
Cancellation No. 92066084
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from “gelatin,” this by itself would show that the mark is at most suggestive, not
descriptive of the goods. The “December 2017 – Gelli Printing” screenshot38 uses the
wording “Gelli Printing” to promote a monoprinting project using Respondent’s
printing plates and a third-party’s stamping cards. This is also insufficient to
convince us that the term is merely descriptive. The evidence hardly suffices to
overcome the presumption of validity accorded the registration. Indeed, the
“negative” dictionary evidence shows that GELLI does not have a commonly
understood meaning; the terms “gel” and “gelatin” rather than GELLI are generally
used to describe the type of printing plate Respondent’s goods emulate; and “gelatin”
is used to describe an essentially home-made printing plate, made from unflavored
gelatin such as is sold under the Knox brand.39
IV. Conclusion
After careful consideration of the parties’ arguments and the evidence properly
made of record, we find that Petitioner has not carried its burden to establish by a
preponderance of the evidence that Respondent’s mark is merely descriptive of
“printing plates” under Section 2(e)(1) of the Trademark Act.
Decision: The petition to cancel Registration No. 4209019 for the mark GELLI
ARTS is denied.

38 14 TTABVUE 33.
39 See, e.g., HOW-TO: GELATIN PRINTING at 14 TTABVUE 31. “Gelatin printing is a form of
monoprinting in which a gelatin slab is used as a printing ‘plate’ in conjunction with standard
water soluble printing inks to create images.” Under “Basic materials,” the item “unflavored
gelatin (Knox brand, etc.)” is listed. Id.