Retail Royalty CompanyDownload PDFTrademark Trial and Appeal BoardJun 18, 2009No. 77213286 (T.T.A.B. Jun. 18, 2009) Copy Citation Mailed: June 18, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Retail Royalty Company ________ Serial No. 77213286 _______ 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 5 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 6 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 7 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 9 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 10 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). Copy with citationCopy as parenthetical citation