ToeSox, Inc.

Trademark Trial and Appeal Board

Mar 26, 2010

No. 77109709 (T.T.A.B. Mar. 26, 2010)

Mailed:
March 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ToeSox, Inc.
________

Serial No. 77109709
_______

Dana B. Robinson of TechLaw LLP for ToeSox, Inc.

Leigh A. Lowry, Trademark Examining Attorney, Law Office
115 (Thomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Zervas and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

ToeSox, Inc. (applicant), on February 16, 2007, filed
an application to register ToeSox in standard characters
for “socks” in International Class 25. The application was
filed under Section 1(a) of the Trademark Act of 1946,
15 U.S.C. §1051(a). In response to a refusal under Section
2(e)(1) of the Trademark Act, applicant filed an amendment
to seek registration on Supplemental Register. Upon
applicant’s amendment to the Supplemental Register, the
examining attorney refused registration under Section 23 of
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Ser No. 77109709
2
the Trademark Act, 15 U.S.C. § 1091, on the ground that
applicant’s proposed mark is generic and, as such,
unregistrable. Trademark Manual of Examining Procedure
(“TMEP”) §§815.04 and 1209.02(a)(i) (6th ed. 2009) (when an
applicant amends its application to the Supplemental
Register in response to a Section 2(e)(1) descriptiveness
refusal, if the examining attorney determines that the
designation is a generic name for the applicant’s goods,
the statutory basis for such a refusal is Section 23 of the
Trademark Act). See also In re Controls Corp. of America,
46 USPQ2d 1308, 1309 n. 2 (TTAB 1998).
Applicant appealed the refusal to register its
proposed mark ToeSox on the Supplemental Register. Thus,
the issue on appeal is whether applicant’s proposed mark
ToeSox is generic for “socks” and, therefore, incapable of
registration on the Supplemental Register.1
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re

1 Applicant’s amendment to the Supplemental Register is a
concession that the mark is merely descriptive. Plus Products v.
Star-Kist Foods, Inc., 220 USPQ 541, 543 (TTAB 1983); Evans
Products Co. v. Boise Cascade Corp., 218 USPQ 160, 162 (TTAB
1983); In re Amerace Corp., 196 USPQ 193, 195 (TTAB 1977).
Because the only issue on appeal is whether applicant’s mark is
generic and, therefore, incapable of registration on the
Supplemental Register, we will not consider applicant’s argument
that its mark is suggestive.
Ser No. 77109709
3
Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir.
2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987).
The critical issue is to determine whether the record
shows that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of goods in question. H. Marvin Ginn
Corp. v. International Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re
Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, 4 USPQ2d at 1143; In re
Northland Aluminum Products, Inc., 777 F.2d 1556,
227 USPQ 961, 963 (Fed. Cir. 1985).
Ser No. 77109709
4
We begin by finding that the genus of goods at issue
in this case is adequately defined by applicant’s
identification of goods, namely, “socks.” Magic Wand Inc.
v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir.
1991) (“[A] proper genericness inquiry focuses on the
description of [goods or] services set forth in the
[application or] certificate of registration”). As shown
below, the excerpt from applicant’s website submitted by
the examining attorney further clarifies that the goods in
this genus include toe-fitting socks (i.e., socks that
delineate the individual toes):

ToeSox brand toe socks are an innovative
alternative to traditional athletic socks.
ToeSox are a form-fitting second skin for your
feet, forming to the contours of your foot while
allowing the toes to separate.

www.toesox.com.2 See In re Web Communications,
49 USPQ2d 1478, 1479 (TTAB 1998) (consulting services

2 March 20, 2007 Office Action.
Ser No. 77109709
5
include assisting customers in communications through the
Internet). See also In re Stereotaxis Inc., 429 F.3d 1039,
77 USPQ2d 1087, 1089 (Fed. Cir. 2005), quoting, Application
of Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 48 (CCPA
1975) (“Our predecessor court...has stated that
registration should be refused if the mark is descriptive
of any of the goods for which registration is sought”); In
re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988),
aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989)
(unpublished) (registration is properly refused if the
subject matter for registration is generic of any one of
the goods for which registration is sought).
Turning to the second inquiry, the public’s
understanding of the term, the relevant public consists of
the ordinary consumer interested in purchasing socks,
including toe-fitting socks.
As noted above, the evidentiary burden of establishing
that a term is generic rests with the USPTO and the showing
must be based on clear evidence. Merrill Lynch,
4 USPQ2d at 1143. Based on the record described below, we
find that there is clear evidence to support a finding that
the relevant public, when it considers ToeSox in
conjunction with socks, would readily understand the term
Ser No. 77109709
6
to identify a type of socks, namely, toe-fitting socks.
The examining attorney submitted the following evidence:
1. An entry from Wikipedia defining “toe socks” as
“socks that have been knitted so that each toe is
individually encased the same way that fingers are
individually encased in a glove.”3
2. An entry from the About Shoes website
(http://shoes.about.com) entitled “Toes Socks: Why and
Where to Buy Toe Socks.” The author describes “toe socks”
as “socks with toes.”4
3. Website excerpts from 11 retailers advertising
the sale of “toe socks.”5 The websites use the term “toe
socks” to identify socks with toes. Attached below is an
excerpt from the Toesocksupplier.com website.

3 March 20, 2007 Office Action.
4 Id.
5 Id.
Ser No. 77109709
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4. Copies of three registrations and five
applications that use the term “toe socks” in the
description of goods.6
5. An excerpt from the Inthe80s.com website entitled
“Clothes of the Eighties, toe socks.”7
Type of clothing: brightly stiped
(sic) socks w/a pocket for ea. toe.

6. An excerpt from The Gremlin Wrangler blog
(http://gremlinwrangler.blogspot.com) posted Thursday,
October 30, 2008, entitled “Toe Socks: A Deep and
Meaningful Discussion.”
I have a VERY important question to
pose to you. You know, to encourage
blogging interaction and whatnot.

Are you back? That’s peachy.

Now.

Toe socks.

I’m not a big fan of socks usually.
I’m hot natured and socks put me over
the edge. But when the land of eternal
flatness turns on me about this time of
the year and I start freezing my tush
off, I must wear the socks. And what a
contradiction I am to myself to have
anything on my feet, yet to so in lurve
(sic) with socks that embrace each
little piggy.

So. Toe socks. Discuss please.

6 Id.
7 January 29, 2009 Office Action.
Ser No. 77109709
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Eighteen people posted comments on the blog. The postings
show that the writers understand that toe socks are form
fitting socks with separate pockets for each toe.
7. An excerpt from the All Things Cupcake website
(allthingscupcake.com) featuring a blog regarding “Cupcake
Toe Socks.”8

8 January 21, 2009 Office Action.
Ser No. 77109709
9
8. A second set of excerpts from websites from 14
retailers advertising the sale of “toe socks.”9 The
websites use the term “toe socks” to identify socks with
toes.
9. A sampling of 440 news articles from the
LexisNexis database referencing “toe socks.”10 The
following excerpts are representative:
Daily Camera (Boulder, Colorado)
June 8, 2009

Laura wears striped socks, toe socks,
thigh-high socks, argyle and tie-dyed
and homemade and theme socks for every
occasions. … In the summer, wear
lightweight socks, thin tights or toe
socks – preferably with ballet flats or
May Janes and not flip-flops.

News & Record (Greensboro, North
Carolina) April 10, 2009

. . . shop offers items such as beaded
vintage handbags and modern, gently
used clothes.

And on one side of the store: socks.

There are “toe socks” that resemble
gloves for feet. There are socks for
athletes and special ones for people
with diabetes.

9 Id. We note that the excerpts from the EBay website and
applicant’s website were submitted in both this Office Action and
the March 20, 2007 Office Action.
10 August 11, 2009 Office Action.
Ser No. 77109709
10
St. Petersburg Times (Florida) April 5,
2009)

. . . you’re planning a trip with a
long flight and have concerns about
circulation in your legs, look to
travel in toe socks offered by Injinji.
The socks fit like gloves for your
feet, with toes separated, and are made
with Lycra fiber.

10. An advertisement from Walgreens for numerous
products, including “Super Soft Toe Socks and Glove Set.”11
The examples of competitors’ use of the term “toe
socks” as the name of their goods is persuasive evidence
that the relevant consumers perceive the term as generic.
Continental Airlines Inc. v. United Airlines Inc., 53
USPQ2d 1385, 1395 (TTAB 1999). Indeed, even applicant
represents its products as “toe socks” in its website, as
shown supra (“ToeSox brand toe socks”).
The compression of the words “toe socks” into a single
term, ToeSox, still conveys the commercial impression of
two words. In other words, consumers would recognize the
mark as consisting of the separate elements “Toe” and
“Sox.” See In re Cox Enterprises Inc., 82 USPQ2d 1040,
1043 (TTAB 2007) (“THEATL is simply a compressed version of
the descriptive term THE ATL without a space between the
two words. Without the space, THEATL is equivalent in sound,

11 Id.
Ser No. 77109709
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meaning and impression to THE ATL and is equally
descriptive of applicant's goods”); In re Planalytics Inc.,
70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of
providing on-line risk management services in the field of
pricing and purchasing decisions for natural gas; the
absence of the space does not create a different meaning or
perception of the term). The Planalytics decision, 70
USPQ2d at 1455-56, also cited the following cases in which,
although a space was deleted between the words, the
combined term remained descriptive:
In re Gould Paper Corp., 834 F.2d 1017,
5 USPQ2d 1110 (Fed. Cir. 1987)
(SCREENWIPE generic for a wipe for
cleaning television and computer
screens); In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978)
(GASBADGE at least descriptive for gas
monitoring badges; three judges
concurred in finding that term was the
name of the goods); In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED descriptive for jams and
jellies that would be a spread for
bread); In re Perkin-Elmer Corp., 174
USPQ 57 (TTAB 1972) (LASERGAGE merely
descriptive for interferometers
utilizing lasers).

Also, consumers readily perceive “sox” to be a
misspelling of “socks.” In this regard, the examining
attorney introduced evidence that “sox” is informally
defined as the plural of “socks.” MSN.Encarta Dictionary
(http://msn.com) and Yahoo!Education dictionary
Ser No. 77109709
12
(http://education.yahoo.com).12 It is settled that a mere
misspelling of a generic term does not negate its
genericness. See, e.g., In re Stanbel Inc., 16 USPQ2d 1469
(TTAB 1990), aff'd, 20 USPQ2d 1319 (Fed. Cir. 1991)(ICE PAK
held generic for ice packs); In re Hubbard Milling Co., 6
USPQ2d 1239 (TTAB 1987)(MINERAL-LYX held generic for
mineral licks for feeding livestock).
Applicant argues that the relevant consumers are
limited to people who practice yoga and pilates.
Applicant is one of the nation’s top
brands of yoga socks, which are worn
when practicing yoga and/or pilates.
As such, the consuming public here
consists of people who practice yoga
and/or pilates, and the Examining
Attorney must show these people
understand “TOESOX” to refer to socks
in general.13

However, applicant’s description of goods is not limited to
socks for use in connection with yoga and pilates, and we
may not insert such a limitation in the description of
goods. See in re BetaBatt Inc., 89 USPQ2d 1152, 1156 (TTAB
2008), citing In re Theatre Clubs Co., 9 USPQ2d 1660, 1662
(TTAB 1998) (since applicant's identification of services
does not restrict their location to sites away from the
actual place of performance, it is presumed that such

12 August 11, 2009 Office Action.
13 Applicant’s Brief, p. 2.
Ser No. 77109709
13
services may be offered at the site of performance or away
from it). It is well settled that the Board may not read
unstated restrictions into the goods. In the absence of a
restriction in the description of goods as to the type of
goods, channels of trade, or classes of purchasers, the
presumptions afforded to a registration under Section 7(b)
of the Trademark Act of 1946 include a presumption of use
on all the goods encompassed by the description of goods in
all of the normal markets or channels of trade for such
goods and services to all potential purchasers therefor.
Cf. Autac Inc. v. Viking Industries, Inc., 199 USPQ 367,
374 (TTAB 1978), and cases cited therein. Because the
description of goods is unrestricted, the products
identified in the application include all consumers of
socks, not just consumers of socks for use in connection
with yoga and pilates. Moreover, practitioners of yoga and
pilates are members of the general public, and would buy
socks for regular use as well.
Applicant argues that ToeSox is not generic because
that word or term does not appear in any dictionaries. In
this regard, it is well settled that the fact that a term
is not found in a dictionary is not controlling on the
question of registrability if the examining attorney can
show, as she did in this case, that the term has a well
Ser No. 77109709
14
understood and recognized meaning. See In re Central
Counties Bank, 209 USPQ 884, 888 (TTAB 1981); In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977).
Finally, applicant asserts that its extensive
advertising and promotional efforts rebut any finding
that ToeSox is generic.14 Applicant cited In re America
Online Inc., 77 USPQ2d 1618 (TTAB 2006), for the
proposition that “[s]ignificant amounts of marketing and
advertising, and adequate policing of a mark negate a find
of genericness.”15 Although such evidence must be
considered in determining whether a term is generic, in
this case, applicant did not submit evidence demonstrating
significant amounts of marketing and advertising and
policing.
The evidence that applicant submitted includes
excerpts from its website. However, those web pages use
the term “toe socks” generically. For example, applicant
touted the fact that it is “using 100% Organic Cotton in
our toe socks,”16 and it entitled another entry in its
website as “Yoga Toe Socks.”17

14 Applicant’s Brief, p. 2.
15 Applicant’s Brief, p. 2.
16 Applicant’s July 20, 2009 request for reconsideration.
17 Applicant’s December 29, 2008 response.
Ser No. 77109709
15
Applicant also submitted a review of its product in
the 1greenproduct.com website, but it is not clear how
many, if any, people have seen this website as there were
no comments in the space provided in the website to respond
to the review.18
Finally, applicant submitted excerpts from websites
identifying socks with toes as “Yoga Socks,” presumably to
show that this is the generic name for socks with toes.
However, a product may have more than one generic name. In
re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970)
(Rich, J., concurring) (“All of the generic names for a
product belong in the public domain”) (emphasis in the
original); Roselux Chemical Co., Inc. v. Parsons Ammonia
Company, Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962)
(a product may have more than one common descriptive name).
In view of the foregoing, we find that the examining
attorney has met her burden of establishing that ToeSox is
generic and incapable of registration for “socks.”
Decision: The refusal to register is affirmed.

18 Applicant’s July 20, 2009 request for reconsideration.