The Port Authority of New York and New Jersey

Trademark Trial and Appeal Board

Aug 10, 2020

88005756 (T.T.A.B. Aug. 10, 2020)

Mailed:
August 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Port Authority of New York and New Jersey
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Serial No. 88005756
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Daniel D. Frohling and Tatyana V. Gilles of Loeb & Loeb LLP
for Port Authority of New York and New Jersey.

Christopher M. Nunley, Trademark Examining Attorney,
Law Office 104 (Zachary Cromer, Managing Attorney).
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Before Kuhlke, Mermelstein and Pologeorgis, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Port Authority of New York and New Jersey, filed an application to
register on the Principal Register the mark ONE WORLD COMMONS in standard
characters for services ultimately identified as:
Providing facilities for business meetings and business
events; providing individual work spaces for business
purposes; providing breakout areas for small business
meetings and events; retail store services featuring grab
and go food and beverage items, sandwiches, salads,
snack foods, fresh fruit, candy, assorted cookies and
desserts, pastries, hot chocolate, soft drinks, tea, coffee,
and other non-alcoholic beverages, energy drinks; food
and beverage markets, in International Class 35;
Food and meal delivery service, in International Class 39;
This Opinion is not a
Precedent of the TTAB
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Providing commercial office building amenities, namely,
facilities for recreation and exercise, and for
entertainment and leisure activities, in International
Class 41; and
Providing commercial office building amenities, namely,
providing dining services; Providing commercial office
building amenities, namely, providing general purpose
facilities for business meetings, general purpose facilities
for business conferences, conference facilities, social
function facilities, cafeteria and catering services, in
International Class 43.
The application was filed on June 19, 2018, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The Examining Attorney refused registration based on Applicant’s failure to
comply with a requirement to disclaim the word COMMONS apart from the mark
as shown. 15 U.S.C. §§ 1052(e)(1) and 1056. The Examining Attorney maintains
that the word COMMONS is merely descriptive under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), when used in connection with Applicant’s
services.
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. The request was denied on November 6, 2019. The appeal was
subsequently resumed and is now fully briefed.
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. 15 U.S.C. § 1056. This section of the
statute was amended in 1962 to allow the exercise of greater discretion by
examining attorneys in determining whether a disclaimer is necessary. See TMEP
§ 1213.01(a) (Oct. 2018). See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116
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USPQ2d 1262 (Fed. Cir. 2015). Merely descriptive or generic terms are
unregistrable under 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 registration. La. Fish Fry, 116 USPQ2d at 1264 (citing In re
Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005)) (“The PTO can
condition the registration of a larger mark on an applicant’s disclaimer of an
‘unregistrable component of a mark otherwise registrable.’ 15 U.S.C. § 1056(a)”).
See also In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it immediately conveys information of a quality,
feature, function, or characteristic of the goods or services in connection with which
it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d
872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark
is merely descriptive must be made “in relation to the goods [or services] for which
registration is sought, the context in which it is being used, 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 or intended use.” In re Bayer AG, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978)). It is not necessary, in order to find a mark
merely descriptive, that the mark describe each feature of the goods or services,
only that it describe a “single feature or attribute” of the goods or services. Chamber
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of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987). Finally, if the mark is descriptive of any of the
goods or services for which registration is sought, it is proper to refuse registration
as to the entire class. In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d
without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
The Examining Attorney asserts the word COMMONS is merely descriptive of
Applicant’s services in each of the classes because it immediately describes a
feature or purpose of the services, namely, that Applicant provides common areas
and common resources to all tenants and their guests. Ex. Att. Brief, 11 TTABVUE
13. Applicant contends the Examining Attorney has failed to prove that COMMONS
is merely descriptive. App. Brief, 9 TTABVUE 10.
In support of the refusal, the Examining Attorney relies on: dictionary
definitions; Applicant’s use of the term in its advertising; third-party registrations
that include the word COMMONS disclaimed in the mark; and third-party usage of
the term. The Examining Attorney submitted several dictionary definitions for
COMMONS set forth below:
A piece of land subject to common use;1
A dining hall;2 and
Land or resources belonging to or affecting the whole of a
community.3

1 Merriam-Webster (2018) (www.merriam-webster.com), October 9, 2018 Office Action at 2.
2 Id.
3 Oxford Dictionary (US) (en.oxforddictionaries.com) April 17, 2019 Office Action at 2.
Applicant’s statement that this definition is British, is mistaken, it is clearly referenced as
American, or US, English.
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The Examining Attorney argues that the definition “a piece of land subject to
common use” merely describes “the location or source (i.e., food delivery) of
[Applicant’s] services” which are “provided in an area subject to common use.” Ex.
Att. Brief, 11 TTABVUE 6. Further, the Examining Attorney asserts that the
definition “a dining hall” shows “that commons are not limited to areas provided on
the ground” and “is also descriptive of a characteristic or source of the Applicant’s
services.” Ex. Att. Brief, 11 TTABVUE 7. In addition, because Applicant’s services ,
“providing dining services,” encompass the definition of “a dining hall,” COMMONS
is immediately merely descriptive of those services. Finally, the Examining
Attorney argues the definition, “land or resources belonging to or affecting the
whole of a community,” shows the term is merely descriptive for Applicant’s services
because Applicant “intends to provide resources (a world -class business and social
hub fostering workplace creativity, collaboration, and community) to a defined
community (tenants and their guests).” Ex. Att. Brief, 11 TTABVUE 8.
Applicant limits the definition of COMMONS by arguing that it is “inextricably
tied to ‘a piece of land,’” in contrast to its services which are provided “high above
the streets of Manhattan.” App. Brief, 9 TTABVUE 12. To illustrate its position that
the wording “common use” in the definition for COMMONS does not make all places
of common use “COMMONS,” Applicant provided a chart that juxtaposes its
common use areas, e.g., “commercial office building amenities, namely, facilities for
recreation” with other types of common use area services such as community
centers, bowling alley and a casino and asserts that “no consumer would think of
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them as ‘commons.’” Id. at 12-13. Applicant posits that because all of its facility
services are restricted to “commercial office building amenities” it is “less likely that
a consumer would consider them a ‘commons.’” Id. at 13. Moreover, Applicant
argues that its services by their nature are provided to consumers, one person or
group at a time. Id. at 14. In addition, Applicant points to multiple dictionary
definitions including the definition “dining hall” and notes that the evidence of
record shows that COMMONS in the relevant context of a dining hall denotes one
in a residential school or college.4 While we consider all of the definitions of record ,
we make our determination of mere descriptiveness in the context of the applied-for
services and “so long as any one of the meanings of a term is descriptive, the term
may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126
USPQ2d 1584, 1590 (TTAB 2018).
Applicant also points to the following six use-based third-party registrations it
made of record for marks that include the word “COMMONS” for similar services
without a disclaimer of the word “COMMONS.”5
 Reg. No. 3594518 for the mark for “retail and wholesale
farmer’s market services featuring produce, baked goods, food, plants, and
personal care products,” International Class 45

4 Applicant submitted multiple dictionary definitions for the word “COMMONS” with its
request for reconsideration, including “commons a (used with a singular verb) a large
dining room, especially at a university or college.” Dictionary.com based on The Random
House Unabridged Dictionary (2019), October 17, 2019 Req. for Recon, 4 TTABVUE 32.
5 March 27, 2019 Response pp. 28-48. The third-party applications have no probative value
other than as evidence that the applications were filed. In re Wal-Mart Stores, Inc., 129
USPQ2d 1148, 1159 (TTAB 2019).
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 Reg. No. 4822803 for the mark COWLES COMMONS for “entertainment
in the nature of live music concerts; providing recreation facilities,
namely, providing a public park for recreation purposes,” International
Class 41
 Reg. No. 4733199 for the mark for “bar and restaurant
services; Restaurant and bar services, including restaurant carryout
services; restaurant services, namely, providing of food and beverages for
consumption on and off the premises,” International Class 43

 Reg. No. 5661723 for the mark FARMER’S COMMONS for “restaurant
services,” International Class 43

 Reg. No. 4852595 for the mark THE COMMONS CLUB for “bar and
restaurant services,” International Class 43

 Reg. No. 4930740 for the mark THE COMMONS AT OLD PARKLAND for
“restaurant and cafeteria services,” International Class 43

In response, the Examining Attorney submitted 24 third-party registrations for
purportedly similar types of services where the word “COMMONS” was disclaimed.6
Applicant distinguishes the Examining Attorney’s evidence asserting they are for
different services and that most involve shopping malls, which “relate to land, the
development and management of land or the operation of real estate like shopping
malls.” App. Brief, 9 TTABVUE 19. A few are for different types of services.
 Reg. No. 4586703 for the mark WIKIMEDIA COMMONS for “providing
an on-line publication in the nature of an interactive encyclopedia in the
field of general knowledge containing images, moving images, and
audiovisual images for educational and entertainment purposes,”
International Class 41 (April 17, 2019 Office Action pp. 36-38)

 Reg. No. 4473374 for the same mark for “providing an online searchable
database featuring images, moving images, audiovisual images, and text
in the field of scientific research; providing a website featuring technology
that enables internet users to publicly share images, moving images, and
audiovisual images,” International Class 42 (Id. pp. 36-39)

6 There are a total of 18 different owners out of the 24 registrations.
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 Reg. No. 4829999 for the mark NORTON COMMONS for books,
newsletters, publications about the Norton Commons planned community,
International Class 16, charitable fundraising, International Class 36,
hosting social entertainment event, various entertainment services,
International Class 41 (Id. pp. 42-44)

 Reg. No. 4767484 for the same mark for construction of a planned
community, International Class 37, entertainment services, International
Class 41 (Id. pp. 45-57)

 Reg. No. 5187100 for the mark GA GREEN ACRES COMMONS for retail
department store services; promoting the goods and services of shopping
center lessees through holiday and special occasion sales promotions,
providing informational services in the field of customer service and
volunteer-based community service, International Class 35 (Id. pp. 48-50)

The Examining Attorney also submitted a few examples of third parties using
the word COMMONS asserting the word is used “to identify common areas which
provide services similar and/or identical to the applicant’s.”7 A few representative
examples are set out below.
8

9

7 November 6, 2019 Reconsideration Letter p. 1.
8 Id. p. 2 (http://www.communitycouncilstc.org).
9 Id. p. 3 (www.thecommons.co).
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10
11
12
We find most of the examples to be somewhat ambiguous inasmuch as they may
be interpreted as trademark usage. Such use may point to dilution but has less
probative value in measuring mere descriptiveness.
Applicant argues that:
[T]he Examining Attorney’s argument fails because, at
root, its logic is that Applicant’s amenity floor is a
commons and, thus, COMMONS is descriptive of
anything that is provided there (e.g., ‘retail store services
featuring grab and go food and beverage items…’) or
emanates from there (e.g., ‘food and meal delivery
service’). In fact, no evidence of record supports the notion
that Applicant’s floor is a commons and, failing such
proof, the Examining Attorney may not logically assume
(in his favor) a fact that is at or near the core of the issue.
The Examining Attorney’s argument also fails because it
is far from clear that, if a term is descriptive of a place, it
must be descriptive of everything done there or that
emanates from that place.
App. Brief, 9 TTABVUE 20-21.

10 Id. p. 5 (www.sierracommons.org).
11 Id. p. 4 (www.potterlawson.com).
12 Id. p. 6 (www.thecommonscolumbus.com).
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These arguments are not persuasive. Applicant’s services specifically include
“providing facilities for business meetings and business events; providing individual
work spaces for business purposes; providing breakout areas for small business
meetings and events,” in International Class 35, “providing commercial office
building amenities, namely, facilities for recreation and exercise, and for
entertainment and leisure activities,” International Class 41, and “providing
commercial office building amenities, namely, providing general purpose facilities
for business meetings, general purpose facilities for business conferences,
conference facilities, social function facilities,” International Class 43. These are
areas for common use. The dictionary definition using the word “land” certainly
refers to the area in a town called a commons, i.e., “land … belonging to or affecting
the whole of a community.” However, when applied to the provision of facilities, the
main aspect of which is the provision of a common use area, COMMONS is merely
descriptive as it immediately informs the consumer there is a common use area. As
explained in Applicant’s advertising it provides “a 25,000F amenity space
exclusively for tenants of One World Trade and their guests” and “this premium
floor serves as a world-class business and social hub fostering workplace creativity,
collaboration, and community.”13 It provides “flexible conference, meeting and event
rooms, common areas, game room, and cafe coupled with state-of-the-art technology
and services.”14 As noted above, if the mark is descriptive of any of the goods or
services for which registration is sought, it is proper to refuse registration as to the

13 October 9, 2018 Office Action p. 3 (www.onewtc.com).
14 Id.
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entire class. In re Analog Devices Inc., 6 USPQ2d at 1808. The examples of bowling
alleys and casinos etc. are inapposite. The feature of those services is the
recreational activity provided. Here, for many of Applicants’ applied -for services the
main feature is the provision of the space.
However, with regard to the “food and meal delivery service” in International
Class 39, this record does not support a mere descriptiveness finding. The
connection to the meaning “dining hall” typically in a college is too attenuated to
merely describe a feature of the services as coming from a COMMONS.
Decision: The refusal to register is reversed as to International Class 39 and
affirmed as to International Classes 35, 41 and 43. However, if Applicant submits
the required disclaimer within 30 days of the mailing date of this decision, the
requirement will be met and the application will proceed in all four classes.
Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g). If the disclaimer is submitted, the
wording will read as follows: No claim is made to the exclusive right to use
“COMMONS” apart from the mark as shown in Classes 35, 41, 43. See TMEP §
1213.08(a)(i). In the event Applicant fails to submit the disclaimer, the application
will proceed with the Class 39 services only.