Retail Royalty Company

Trademark Trial and Appeal Board

Jun 18, 2009

No. 77213286 (T.T.A.B. Jun. 18, 2009)

Mailed: June 18, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Retail Royalty Company
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Serial No. 77213286
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Sarah Otte Graber of Wood, Herron & Evans, L.L.P. for
Retail Royalty Company.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On June 22, 2007, Retail Royalty Company, applicant,
filed an application under Trademark Act Section 1(b), 15
U.S.C. §1051(b), based on an intention to use the mark in
commerce, to register the mark AERIE FIT SWEAT FREE FABRIC
in standard characters for “fabric for the manufacture of
clothing” in International Class 24 and “clothing, namely
tops, bottoms, pants, shorts, shirts, vests, skirts,
dresses, sweatshirts, sweatpants, sweatsuits, jogging
suits, swimwear, underwear, jackets, coats, wristbands,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77213286
2
outerwear, headwear and footwear” in International Class
25. The application also includes a disclaimer for the
word FABRIC.
Registration has been refused pursuant to Section 6(a)
of the Trademark Act, 15 U.S.C. §1056(a), based on
applicant’s failure to comply with the requirement to
disclaim the additional descriptive wording SWEAT FREE,
such that the disclaimer would be SWEAT FREE FABRIC, on the
ground that it is merely descriptive of applicant’s goods
within the meaning of Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1).
When the refusal was made final, applicant appealed
and filed a request for reconsideration. On December 23,
2008 the examining attorney denied the request and
maintained the refusal. The appeal was subsequently
resumed and fully briefed. We affirm the refusal of
registration in the absence of a disclaimer.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
Ser No. 77213286
3
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National
Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In
re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of 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 (CCPA 1978).
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).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
Ser No. 77213286
4
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, “[a] mark can be descriptive if it describes the
intended users of the goods or services.” In re
Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).
Inasmuch as applicant has already disclaimed the word
FABRIC, the only issue on appeal is the requirement for
disclaimer of the additional wording SWEAT FREE. The
examining attorney argues that the wording SWEAT FREE:
...describes a characteristic and a feature of
the relevant goods. In this case, the evidence
of record clearly demonstrates that “sweat free
fabric” describes both a feature of the goods and
an aspect of the goods’ manufacture. In both
contexts, the words “sweat free fabric” serve a
descriptive function.

First, “sweat free fabrics” are fabrics or
clothing that either absorbs sweat or minimizes
sweating on the person wearing the fabric or
clothing...Second, “a sweatshop is a place that
uses exploited labor methods to make as much
profit as possible.” In clothing parlance,
“sweat free fabrics” or “sweat free clothing” are
fabrics or clothing that are not made or
manufactured in a sweat shop environment.

Br. p. 3.
Ser No. 77213286
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In support of the refusal, the examining attorney
referenced the following dictionary definitions for the
words SWEAT and FREE:
Sweat: 2. the fluid excreted from the sweat
glands of the skin. Merriam-Webster’s Online
Dictionary, www.Merriam-Webster.com; and

Free: 3 (a) relieved from or lacking something
and especially something unpleasant or burdensome
... often used in combination .
Merriam-Webster’s Online Dictionary, www.Merriam-
Webster.com.

In addition, the examining attorney provided printouts
from the results retrieved from an Internet search engine
showing descriptive use of the phrase SWEAT FREE in
connection with fabric and clothing, and from articles
retrieved from the Nexis database. A few examples are set
out below:1
Ironclad’s 1st Layer Cold Condition is constructed
of ... A snug fit helps keep in heat while
sweat-wicking material construction ensures sweat
free comfort. www.redhillsupply.com;

Aerie f.i.t. sports bra, fun, inspirational,
technical. Features: aerie sweat free fabric,
fully breathable, elastic medium impact design
www3.dealtime.com;

These pants feature moisture-wicking Dri-FIT
fabric to help keep you sweat free while you run.

1 While the excerpts from foreign press retrieved from NEXIS may
also have some probative value with respect to prospective
consumer perception in the United States, In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir.
2007), we have not relied on these excerpts for our
determination.

Ser No. 77213286
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Full elastic and external drawcord waist for a
comfortable... www.thefind.com;

SWEAT FREE sweatshop-free t-shirts and more
www.pcusa.org;

Our 100% Certified Organic Cotton interlock
bodysuit for baby, unembellished. Features and
adorable front pocket. The sewing of these
garment is completed at the Fair Trade Zone or a
sweat-free manufacturer in the U.S.A.
www.earthscreen.com;

Elbeco, a Pennsylvania-based uniform
manufacturer, recently endorsed the SweatFree
Communities campaign for worker rights. The
company is the first manufacturer of professional
performance uniforms for police, tactical, fire,
EMT and the U.S. Postal Service to join the
campaign. The SweatFree coalition includes
government leaders, labor unions, religious
institutions, school districts and others working
to end unfair labor practices at home and around
the world. www.elbeco.com; and

Each product is made from aerie Fit Sweat Free
Fabric. The workout wear is designed to pull
moisture away from the body, and includes hidden
money pockets, reflective piping and special
flat-seam construction. “Women’s Wear Daily”
(October 24, 2007).

We find that the examining attorney has made a prima
facie case that the wording SWEAT FREE in connection with
applicant’s fabric and clothing is descriptive. The
dictionary definitions alone establish the descriptive
nature of the individual words as they pertain to fabric
and clothing. In the context of fabric and clothing the
meaning of SWEAT as perspiration would be applicable and
the addition of FREE in this context would have the meaning
Ser No. 77213286
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to be relieved from something unpleasant. Thus, the
combination of the terms does not present a unique or
incongruous phrase. Each element of the proposed mark is
descriptive and when combined these elements do not lose
their descriptive significance. Further, as shown by the
excerpts from the Internet and Nexis, which include
applicant’s proposed mark, the combination SWEAT FREE is
used to indicate a desired feature or function of the
goods, namely, that they absorb or wick away moisture to
leave the wearer “sweat free.”
Applicant points to other meanings of the word FREE,
e.g., “have liberty,” “move in any direction,” “not
confined,” “not restricted,” “easy and graceful,” and notes
that these meanings in combination with the word sweat are
nonsensical. However, the fact that the word FREE has
other meanings is not dispositive, rather we look to the
meaning within the context of the goods and here, as noted
above, SWEAT FREE points to the commonly used meaning of
FREE in conjunction with another word, i.e., the absence of
something unpleasant.
Applicant argues that although the “goods may pull
sweat away from the wearer ... [s]he is not necessarily
without any sweat.” Br. p. 5. Applicant concludes that
“in looking at this phrase as used with Applicant’s goods,
Ser No. 77213286
8
consumers would have to go through several mental leaps and
use imagination to understand what this phrase might
suggest about Applicant’s goods.” Br. p. 6. Further,
applicant contends that the phrase is incongruous because
the:
...goods do not make one sweat, or “free” from
sweat. Rather, these goods merely pull the sweat
away from one’s body, albeit temporarily.
Applicant’s goods are intended to be worn while
the wearer exercises or works out. Thus, the
wearer still can, and will likely, produce sweat.
In fact, the use of SWEAT and FREE for clothing,
especially for workout clothing, is at least
incongruous, if not bizarre, because the wearer
is likely to sweat more than they normally would.
Consumers wearing Applicant’s product are not
likely to sweat less or, especially, not sweat at
all.

Br. pp. 6-7.

However, as applicant states, its goods “absorb
sweat.” Br. p. 5. Thus, we find that there is no mental
leap necessary to surmise that the goods have the feature
of leaving the wearer “sweat free.” In addition, far from
being incongruous, the phrase precisely describes a major
selling feature of the clothing, namely to keep the wearer
sweat free while engaging in strenuous activity.
As to applicant’s argument that the combination is
unique and there are no other pending or registered marks
with the phrase SWEAT FREE, it is well established that
merely because an applicant is the first to use a
Ser No. 77213286
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descriptive term or phrase does not make it non-
descriptive. In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018 (TTAB 1983).
With regard to the alternative meaning of SWEAT FREE,
i.e., free from sweatshop manufacturing, the record does
not support a finding that consumers have been so exposed
to this meaning in the context of fabric and clothing to
understand the descriptive significance in that sense, and
the dictionary definitions of SWEAT and FREE alone are not
sufficient to establish that the phrase would be perceived
as meaning free from sweatshop manufacturing.
With regard to applicant’s argument that if SWEAT FREE
has dual meanings then SWEAT FREE “suggests something more
than the characteristics of the goods and functions as more
than a mere description of the goods,” Br. p. 10, we first
note, inasmuch as we find that this record has not
established consumer awareness of the no sweatshop meaning,
the phrase would not be perceived as having dual meanings.
Moreover, even for those consumers aware of the no
sweatshop meaning, this meaning is also descriptive and
does not create the type of double entendre that removes
the phrase from being merely descriptive. See, e.g., In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) (SUGAR & SPICE held not merely descriptive as applied
Ser No. 77213286
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to bakery products where one meaning evokes a nursery
rhyme). Further, we are not persuaded by applicant’s
unsupported argument that SWEAT FREE would be perceived as
a play on the colloquial phrase NO SWEAT.
Applicant correctly states that in cases of refusals
under Section 2(e)(1) we must resolve doubt in favor of
applicant; however, we have no such doubt in this case.
In view of the above, we find that the disclaimer
requirement is appropriate.
Decision: The refusal to register based on the
requirement to include the additional wording SWEAT
FREE in the disclaimer is affirmed. However, if
applicant submits the required disclaimer of SWEAT
FREE FABRIC to the Board within thirty days, this
decision will be set aside as to the affirmance of the
disclaimer requirement.2 See Trademark Rule 2.142(g),
37 C.F.R. §2.142.

2 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use SWEAT FREE FABRIC
is claimed apart from the mark as shown.” TMEP 1213.08(a) (5th
ed. 2007). Unregistrable matter must be disclaimed in its
entirety. In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB
1992).