Wild Candy Pty. Ltd.

Trademark Trial and Appeal Board

Jul 8, 2015

No. 79123938 (T.T.A.B. Jul. 8, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wild Candy Pty. Ltd.
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Serial No. 79123938
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William J. Seiter of Seiter Legal Studio,
for Wild Candy Pty. Ltd.
David Yontef, Trademark Examining Attorney, Law Office 108,
Thomas G. Howell, Managing Attorney.
_____

Before Taylor, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Wild Candy Pty. Ltd. (“Applicant”) seeks registration on the Principal Register
of the mark SNEEZING BABY PANDA (in standard characters) for the following
goods and services:
Facial tissues impregnated with cosmetic lotions
featuring aloe vera and eucalyptus plant extracts,
cosmetics and perfume, in International Class 3;
Pharmaceutical products and preparations, namely,
pharmaceutical preparation for skin care, anti-infectives
and pharmaceutical preparations and substances for the
treatment of viral, metabolic, endocrine, musculoskeletal,
cardiovascular, cardiopulmonary, genitourinary, sexual
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dysfunction, oncological, hepatological, ophthalmic,
respiratory, neurological, gastrointestinal, hormonal,
dermatological, psychiatric and immune system related
diseases and disorders, in International Class 5;
Digital media, namely, pre-recorded CDs, DVDs, video
cassettes, digital video discs, digital versatile discs and
high definition digital discs featuring audio and visual
content in the nature of exposed cinematograph films,
theatrical performances and music; electronic games,
namely, electronic game software, electronic game
programs and downloadable electronic games via the
Internet and wireless devices, in International Class 9;
Paper, cardboard, and goods made from these materials,
not included in other classes, namely, printed posters;
photographs; stationery; printed instructional and
teaching material except apparatus in the field of
animals, nature and the environment; books, namely,
children's books, comic books, coloring books, series of
fiction books, series of non-fiction books in the field of
animals, nature and the environment and educational
books and coffee table books featuring animals, nature
and the environment; brochures about animals, nature
and the environment; publications, namely, magazines,
hand-outs and workbooks in the field of animals, nature
and the environment; printed event programs and
souvenir programs concerning animals, nature and the
environment; face and facial tissues of paper, in
International Class 16;
Mugs; beverage glassware; porcelain and earthenware not
included in other classes, namely, sculptures, statues and
works of art; containers for household and kitchen use;
hair combs, in International Class 21;
Clothing, namely, t-shirts, sweat shirts and jackets;
footwear; headgear, namely, hats and caps, in
International Class 25;
Games and playthings, namely, plush dolls, stuffed toy
animals and board games; toys, namely, electronic
learning toys, infant toys and hand-held units for playing
electronic games for use with external display screen or
monitor; gymnastic and sporting articles not included in
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other classes, namely, gymnastic apparatus, balls for
sports and protective supports for shoulders and elbows,
in International Class 28;
Chocolate; chocolate confectionary; boiled sweets;
chocolate sweets; sugar sweets; non-medicated chewing
sweets; non-medicated gum sweets; non-medicated
sweets; peppermint sweets, in International Class 30;
Promotion of theatrical performances, concerts,
cinematograph films and musical works for others, in
International Class 35; and
Production of cinematograph films, television programs
and documentary films; entertainment, namely, live
music concerts and orchestra performances; electronic
publication services, namely, digital video, audio, and
multimedia publishing services regarding cinematograph
films, theatrical performances and music; electronic
publication of text and graphic works of others on CD,
DVD and on-line featuring animals, nature and the
environment; entertainment services, namely, theatrical
and musical floor shows provided at performance venues,
in International Class 41.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark for the goods identified in Classes 9, 16, 21, 25 and 28 and the services
identified in Classes 35 and 41 (1) under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the
identified goods and services, and (2) pursuant to Trademark Rule 2.61(b), 37 CFR
§ 2.61(b), on the ground that Applicant failed to comply with the requirement to
submit documents about those goods and services. Neither refusal applies to the
goods identified in Classes 3, 5 and 30.

1 Application Serial No. 79123938 was filed on September 13, 2012, based upon a request
for extension of protection filed under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1141(f).
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In addition, the Examining Attorney has refused registration for the goods in
Classes 21 and 28 pursuant to Trademark Rule 2.61(b) on the ground that
Applicant did not adequately respond to, or comply with, the requirement to
disclose the meaning or significance of the applied-for mark with respect to those
goods.2
When the refusals were made final, Applicant appealed and twice requested
reconsideration. After the Examining Attorney denied both requests, the appeal
was resumed. We affirm the refusal based on Section 2(e)(1) for the goods in Classes
9, 16, 21 and 28, and the services in Class 41. We reverse the refusal based on
Section 2(e)(1) for the goods in Class 25 and the services in Class 35. We also
reverse both refusals made pursuant to Trademark Rule 2.61(b).
I. Background
Applicant is an Australian independent film production company specializing in
documentary films and television programs featuring wildlife. Applicant explains
that when it was filming in the Wolong Panda Breeding Center in China’s Sichuan
province several years ago, Applicant filmed a mother panda eating bamboo while
her panda cub sprawled at her feet. “Clearly frustrated as well as starving, the tiny
panda cub suddenly let loose with his now infamous sneeze,” which startled his
mother. “The moment was recorded for posterity and Sneezing Baby Panda was
born.”3 The following screenshot from Applicant’s website

2 This requirement originally applied to Classes 3, 5, 21, 28 and 30, but was withdrawn as
to Classes 3, 5 and 30 in the November 14, 2013 Office Action.
3 May 1, 2013 Response to Office Action.
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provides background information about Applicant, the
video clip, and the sneezing baby panda star of the video clip:4

Applicant produced a television program named “Little Pandas – The New
Breed” which featured the video clip of the mother panda and her cub (Applicant
refers to this video clip as the “Film Footage”). Applicant states that it is “the
exclusive copyright owner of the Film Footage, and has licensed the Film Footage in
the United States and elsewhere.” However, according to Applicant, an unrelated
third-party “unlawfully reproduced” the video clip from Applicant’s television
program and “unlawfully uploaded [it] onto the Internet,” and the video clip has

4 January 29, 2013 Office Action.
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since “gone viral.”5 On its website, Applicant describes the panda as “one of the
most iconic critters on the Internet! A member of the exclusive 100 million views
club and still climbing at 120,000 hits a day!”6
Applicant currently offers for sale on its website t-shirts featuring a freeze-frame
of the mother and baby pandas from the video clip.7

5 May 1, 2013 Response to Office Action.
6 January 29, 2013 Office Action. See also the TAP Milwaukee website (jsonline) displaying
an excerpt of a news article published in the Journal Sentinel (June 30, 2011) (“Sneezing
Baby Panda turned a big ‘a-choo’ into international stardom when his video clip went viral
and more than 106 million visitors watched him do his snort.”); Know Your Meme website
(knowyourmeme.com) (“Sneezing Baby Panda is a viral video uploaded to YouTube on
November 6th, 2006 that depicts a mother panda at the Wolong Panda Breeding Centre
munching on bamboo while her baby cub sleeps at her feet. Out of nowhere, the baby
sneezes, startling the mother for a second before she returns to her food. As of August 2013,
the video was been [sic] viewed more than 162.7 million times and was named #10 on the
Urlesque’s 100 Most Iconic Internet Videos in April 2009.”). October 11, 2013 Response to
Office Action.
7 January 29, 2013 Office Action.
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In 2014, Applicant expected to release in the United States its feature film
named “Sneezing Baby Panda: The Movie.”8

8 April 15, 1014 Response to Office Action.
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Applicant’s promotional material refers to “[t]he hilariously cute sneezing baby
panda [I]nternet sensation” who “captured eyes, melted hearts and induced fits of
laughter all around the world.”9

Applicant hopes to capitalize on the fame of “Sneezing Baby Panda” through
licensing, merchandising and marketing plans in the United States and elsewhere.

9 Id.
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Applicant explained that these plans include a “children’s environmentally themed
television series with Sneezing Baby Panda as one of the series characters, plus
electronic games and mobile device apps in a similar vein.” Applicant refers to these
licensing and marketing efforts as evidence of Applicant’s “good faith intent to use
‘Sneezing Baby Panda’ as a trademark in the U.S., and [to] demonstrate that
Applicant’s intended use of the trademark transcends the use of ‘Sneezing Baby
Panda’ as a single film title.”
II. Trademark Rule 2.61(b) Requirements
Trademark Rule 2.61(b), 37 CFR § 2.61(b) provides that “[t]he Office may
require the applicant to furnish such information, exhibits, affidavits or
declarations, and such additional specimens as may be reasonably necessary to the
proper examination of the application.” If the applicant does not comply with a
requirement for additional information or to disclose the meaning or significance of
the mark with respect to the identified goods and services, the examining attorney
may refuse registration on that basis. See TBMP § 814 (January 2015).
A. Requirement for Documents – Classes 9, 16, 21, 25, 28, 35 and 41
Throughout prosecution of this application, the Examining Attorney has
required Applicant to provide
fact sheets, instruction manuals, brochures, samples of
advertisements or promotional materials for the identified
goods and services and a photograph of the identified
goods.
If these materials are unavailable, applicant should
submit similar documentation for goods and services of
the same type, explaining how its own product or services
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will differ. If the goods and services feature new
technology and no information regarding competing goods
and services is available, applicant must provide a
detailed factual description of the goods and services.
Factual information about the goods must make clear how
they operate, salient features, and prospective customers
and channels of trade. For the services, the factual
information must make clear what the services are and
how they are rendered, salient features, and prospective
customers and channels of trade. Conclusory statements
will not satisfy this requirement for information.10
The document requirement pertains only to Classes 9, 16, 21, 25, 28, 35 and 41.
However, the Examining Attorney initially issued this requirement in the same
Office Action in which he issued what appears to be an independent requirement for
an acceptable identification of goods and services in several classes, including
Classes 9, 16, 25, 28 and 35.11 In its May 1, 2013 Response to Office Action,
Applicant satisfied the requirement for an acceptable identification of goods and
services. Thus, to the extent the Examining Attorney required the documents to
better understand the particular nature of goods and services in Classes 9, 16, 25,
28 and 35, the requirement is moot.
We further find that the basis for the document requirement with respect to any
of the goods and services in Classes 9, 16, 21, 25, 28, 35 and 41 is unclear. In its
May 1, 2013 Response to Office Action, Applicant provided background information
about the video clip, explained its use of SNEEZING BABY PANDA on t-shirts and

10 January 29, 2013 Office Action. The Examining Attorney repeated this requirement
nearly verbatim in the next three Office Actions.
11 The requirement for an acceptable identification of goods and services did not pertain to
Classes 21 or 41.
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its intention to expand use of SNEEZING BABY PANDA on other merchandise that
is “not intended to be limited in subject matter to pandas … but rather will feature
animals generally, nature and the environment,” and argued that SNEEZING
BABY PANDA “is capable of distinguishing [its] goods and services from the goods
and services of competitors.” Applicant provided with its October 11, 2013 Request
for Reconsideration several Internet printouts that feature and discuss the
popularity of the video clip, and in its April 15, 2014 Request for Reconsideration,
explained its licensing and marketing efforts regarding the upcoming movie and
possible children’s television series, as well as electronic games and a mobile
application.
In the November 14, 2013 Office Action, the Examining Attorney complained
that “most of the Internet printouts submitted by applicant do not contain any new
information regarding the nature of the identified goods and services” nor do they
“shed any light on the nature of the identified goods and services.” However, the
“nature of the identified goods and services” in Classes 9, 16, 21, 25, 28, 35 and 41 is
clear. For example, none of the identified goods or services includes technical matter
that would require Applicant to submit anything to allow the Examining Attorney
to properly examine the application. If the Examining Attorney was trying to
ascertain whether any of Applicant’s goods or services would be related to pandas in
general, or to the sneezing baby panda featured in the video clip, Applicant’s
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responses to the other Trademark Rule 2.61 requirement, discussed below, resolved
this issue as to the Class 21 and 28 goods.12
Under these circumstances, we find that it was incumbent upon the Examining
Attorney to have explained with specificity why he needed additional information.
See TMEP § 814 (“The examining attorney must explain why the information is
needed, if the reason is not obvious.”). The Examining Attorney did not do so. We
therefore reverse the refusal to register Applicant’s mark as to Classes 9, 16, 21, 25,
28, 35 and 41 on the ground that Applicant failed to comply with the Trademark
Rule 2.61 requirement to provide additional information.
B. Meaning or Significance – Classes 21 and 28
With respect to the requirement that Applicant disclose the meaning of
SNEEZING BABY PANDA or whether SNEEZING BABY PANDA has any
significance in relation to the goods identified in Classes 21 and 28, the Examining
Attorney asked the following five questions:13
1. Do any of the goods feature images and/or
information of a sneezing baby panda?
2. Do any of the goods feature images and/or
information of a panda?
3. Do any of the goods take the form/shape of a
sneezing baby panda?
4. Do any of the goods take the form/shape of a
panda?

12 We note that the Examining Attorney never required Applicant to disclose the meaning
or significance of SNEEZING BABY PANDA for the goods identified in Classes 9, 16 or 25,
or for the services identified in Classes 35 or 41.
13 January 29, 2013 Office Action.
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5. Are any of the identified goods intended for use
with a panda?
Although Applicant did not respond specifically to the five questions in its May
1, 2013 Response to Office Action, Applicant provided the following information:
In response to the Examining Attorney’s request for
additional information about the applied for goods and
services, Applicant respectfully submits that its applied
for goods and services, as amended, do not necessarily
have to do with pandas, but rather may feature animals
generally, nature and the environment. Additional
information about the Applicant has been provided
hereinabove, much of which has been made of record by
the Examining Attorney in his office action.
Applicant also explained the following:
Applicant has used the applied for mark in Australia and
elsewhere since the broadcast of the television program,
and owns and operates the website
www.sneezingbabypanda.com referenced by the
Examining Attorney. Currently only t-shirts bearing the
mark are available for purchase online, but Applicant
intends to extend the range of merchandise available for
purchase in the United States and elsewhere. Such
merchandise is not intended to be limited in subject
matter to pandas, but rather, will feature animals
generally, nature and the environment.
The registration of the applied for mark by Applicant will
not preclude others from making descriptive fair use of
the term “Sneezing Baby Panda” to describe Applicant’s
Film Footage. That said, however, Applicant’s exclusive
ownership of the Film Footage and extensive and
substantially exclusive use of the mark SNEEZING
BABY PANDA throughout Australia, the United States,
and worldwide, means that the mark is capable of
distinguishing Applicant’s applied for goods and services
from the goods and services of competitors. Indeed, given
the fame of the Film Footage and its association with
Applicant as the film maker, there is no reason why
another trader would wish to use the same mark on the
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same or similar goods or services unless with improper
motive.
Then, in its October 11, 2013 Request for Reconsideration, Applicant responded
to each of the five questions as follows: “The goods may or may not do so.” We read
this equivocal language as an admission that the goods “will” feature images of or
information about, or take the form or shape of a panda or a sneezing baby panda.
We therefore reverse the refusal to register Applicant’s mark in Classes 21 and 28
on the ground that Applicant failed to comply with the Trademark Rule 2.61(b)
requirement to disclose the meaning of or significance of SNEEZING BABY PANDA
with respect to the identified Class 21 and 28 goods. Cf. In re Cheezwhse.com, Inc.,
85 USPQ2d 1917 (TTAB 2008) (affirming refusal to register based on applicant’s
failure to comply with Trademark Rule 2.61(b) when applicant completely ignored
the examining attorney’s requirement to provide information regarding the
geographic origin of applicant’s goods).
III. Section 2(e)(1)
A. Applicable Law
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service 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 Oppedahl &
Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting Estate
of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538, 543 (1920) (“A mark is merely
Serial No. 79123938
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descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the mark.”). 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
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (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, significant ingredient,
quality, characteristic, function, feature, purpose or use of the goods or services.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The question is not whether someone presented only with the mark could guess
the products or services listed in the description of goods or services. Rather, the
question is whether someone who knows what the goods or services are will
understand the mark to convey information about them. DuoProSS Meditech Corp.
v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB
1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. Oppedahl, 71 USPQ2d at 1371.
However, a mark comprising a combination of merely descriptive components is
registrable if the combination of terms creates a unitary mark with a nondescriptive
meaning, or a double entendre with one meaning being non-descriptive, or if the
composite has an incongruous meaning as applied to the goods or services. See In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE
for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a
snow removal hand tool having a handle with a snow-removing head at one end, the
head being of solid uninterrupted construction without prongs”).
B. Evidence and Argument – Classes 9, 16, 21, 25, 28, 35 and 41
The Examining Attorney contends that SNEEZING BABY PANDA is merely
descriptive of the identified goods and services because they may take the form or
shape of, or feature images or information about, a sneezing baby panda.
In traversing the refusal, Applicant argues that SNEEZING BABY PANDA is
suggestive rather than descriptive of its identified goods and services. Applicant’s
main position is best described in its own words:
The bulk of Applicant’s goods and services in Classes 9,
16, 21, 25, 28, 35 and 41, as amended, have nothing
Serial No. 79123938
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intrinsically to do with pandas, though some of those
goods and services have to do with animals, nature and
the environment. Therefore, the mark should not be
regarded as merely descriptive.
As is obvious from the amended identification of goods
and services, the goods and services of Applicant may be
anchored in the Movie as well as the Film Footage,
promoting the mark “Sneezing Baby Panda” as an
indicator of source, but those goods and services, on the
face of the identification, do not consist of the Film
Footage itself, even though some of those goods and
services may derive from it, nor does Applicant aim to
protect “Sneezing Baby Panda” as a trademark merely by
use of the term in the title of the Movie.
It is crystal clear from the Examining Attorney’s remarks,
Applicant’s submissions, and the evidence of record that
there is one, and only one, “Sneezing Baby Panda.” The
mark “Sneezing Baby Panda” is not a term descriptive of
pandas or baby pandas in general. The Examining
Attorney and Applicant agree that “Sneezing Baby
Panda” refers to one unique baby panda at one point in
time, the panda cub who let loose with his famous sneeze
memorialized in the Film Footage. “Sneezing Baby
Panda,” soon to be the star of the Movie, has a unique
referent. As pointed out in previous responses, the subject
matter content of some of Applicant’s goods or services
may or may not include pandas, but they may also have to
do with other species of animals, nature and the
environment, and the unique referent “Sneezing Baby
Panda” is intended to be used by Applicant as a source
indicator for its family of goods and services so branded.
Therefore, the mark should not be regarded as merely
descriptive, and the Examining Attorney’s comments
should be reviewed in this context.14
***

14 App. Br. pp. 14-15, 9 TTABVUE 18-19. Citations to Applicant’s and the Examining
Attorney’s briefs in this opinion also include citations to the TTABVUE docket entry
number, and the electronic page number where the argument appears. TTABVUE is the
Board’s electronic docketing system.
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Again, the unique one-off baby panda referenced by the
mark “Sneezing Baby Panda” is intended to be used as a
source indicator for the applied for goods and services, in
the nature of a mascot or flag bearer.15
***
While the term “Sneezing Baby Panda” may be regarded
as descriptive of the Film Footage or the Movie, in the
sense that it is the title of a copyrighted work, and the
title is closely associated with Applicant as the maker of
the Film Footage and the Movie, the trademark “Sneezing
Baby Panda” describes Applicant as the source of its
applied for goods and services, akin to the way a mascot
might identify a sports team, but it does not describe
those goods or services.16
The language limiting many of the printed publications in the Class 16
identification of goods to “animals, nature and the environment” is worded broadly
enough to include a sneezing baby panda as the subject matter of the publications.
It is well-settled that a term which merely describes the subject matter of a
publication is merely descriptive of the publication, for purposes of Section 2(e)(1).
See, e.g., In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993) (MEDICINE merely
descriptive of journal); In re Women's Publishing Co., Inc., 23 USPQ2d 1876 (TTAB
1992) (DECORATING DIGEST merely descriptive of magazine). Similarly, the
various types of pre-recorded “digital media” … “featuring audio and visual content
in the nature of exposed cinematograph films” and “theatrical performances” listed
in the Class 9 identification of goods are not limited to particular subject matter. We
therefore read this identification to include, for example, pre-recorded high

15 App. Br. p. 17, 9 TTABVUE 21.
16 App. Br. p. 18, 9 TTABVUE 22.
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definition digital discs featuring films and theatrical performances about a sneezing
baby panda. As with the Class 16 printed publications, SNEEZING BABY PANDA
is merely descriptive of Applicant’s Class 9 pre-recorded digital media because the
proposed mark merely describes the subject matter of the identified goods.
Likewise, the services in Class 41, which include “production of cinematograph
films, television programs and documentary films” and “entertainment services,
namely, theatrical and musical floor shows provided at performance venues,” are
not limited to particular subject matter, and therefore could include, for example,
television programs and theatrical performances about a sneezing baby panda.
SNEEZING BABY PANDA therefore also is merely descriptive of the identified
services. See In re Conus Communications Co., 23 USPQ2d 1717 (TTAB 1992) (ALL
NEWS CHANNEL found generic for a television channel broadcasting all news); In
re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986) (THE WEATHER
CHANNEL found generic for a television transmission whose subject matter
exclusively concerns the weather).
Further, as noted above, Applicant has admitted that the goods identified in
Class 21, which includes sculptures and statutes, and in Class 28, which includes
stuffed toy animals, will take the form or shape of a sneezing baby panda.
Accordingly, SNEEZING BABY PANDA merely describes a significant feature of
the identified goods in Classes 21 and 28.
In sum, SNEEZING BABY PANDA describes at least one aspect of some of the
goods identified in Classes 9, 16, 21 and 28, and some of the services identified in
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Class 41. Because SNEEZING BABY PANDA is merely descriptive of some of the
goods identified in Classes 9, 16, 21 and 28, and some of the services identified in
Class 41, we must hold it to be merely descriptive of all of the goods and services
identified in those classes. Chamber of Commerce of the U.S., 102 USPQ2d at 1219
(“A mark need not be merely descriptive of all recited goods or services in an
application. A descriptiveness refusal is proper ‘if the mark is descriptive of any of
the [goods or services] for which registration is sought.’”), quoting, In re Stereotaxis
Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (citations omitted). We
are persuaded, based on the record, that when applied to Applicant’s goods in
Classes 9, 16, 21 and 28, and services in Class 41, that the wording SNEEZING
BABY PANDA immediately describes, without conjecture or speculation, a
significant characteristic or feature of such goods and services, namely, that they
feature information about, or take the form or shape of, a sneezing baby panda.
Nothing requires the exercise of imagination, cogitation, mental processing or
gathering of further information in order for prospective customers of Applicant’s
identified goods and services to perceive readily the merely descriptive significance
of the wording SNEEZING BABY PANDA as it pertains to these goods and services.
However, we reach the opposite conclusion with respect to the clothing identified
in Class 25,17 and the promotional services identified in Class 35, which clearly
indicate that they are provided for others. Although we are not without doubt as to
whether SNEEZING BABY PANDA may have descriptive meaning in either of

17 The clothing identified in Class 25 may reflect some ornamental use of the mark
SNEEZING BABY PANDA. However, that issue is not before us.
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those fields, we resolve that doubt in favor of Applicant.18 In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir.
1987).
Applicant does not dispute that a sneezing baby panda will be the subject matter
of at least some of the digital media and various printed publications identified in
Classes 9 and 16, or the films, television programs and theatrical productions
identified in Class 41. And, as noted above, Applicant has admitted that the goods
identified in Class 21, which include statues and sculptures, and the goods
identified in Class 28, which includes stuffed toy animals, will take the form or
shape of a sneezing baby panda. Indeed, Applicant specifically states “[a]s pointed
out in previous responses, the subject matter content of some of Applicant’s goods or
services may or may not include pandas ….”19 However, Applicant’s main argument
is that even if the goods and services pertain to pandas, “they may also have to do
with other species of animals, nature and the environment, and the unique referent
“Sneezing Baby Panda” is intended to be used by Applicant as a source indicator for
its family of goods so branded.”20
That such goods and services may also feature other animals, nature and the
environment does not transform the otherwise merely descriptive significance of the
mark SNEEZING BABY PANDA into a non-merely descriptive mark when used on
or in connection with the involved goods and services. Rather, because SNEEZING

18 We observe nonetheless that on a different record, such as might be adduced by a
competitor in the field in an opposition proceeding, we might reach a different conclusion.
19 App. Br. p. 15, 9 TTABVUE 19.
20 Id.
Serial No. 79123938
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BABY PANDA is merely descriptive for some of the goods and services in the
aforementioned classes, as previously stated, we must hold it to be merely
descriptive for all of the goods and services identified in those classes. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; Stereotaxis, 77 USPQ2d at 1089.
Applicant also contends that “the title is closely associated with Applicant as the
maker of the Film Footage and the Movie …”21 and “[a]s is obvious from the
amended identification of goods and services, the goods and services of Applicant
may be anchored in the Movie as well as the Film Footage, promoting the mark
‘Sneezing Baby Panda’ as an indicator of source ….”22 However, there is no evidence
that “the title is closely associated with Applicant” other than Applicant’s claim in
its brief and on its own website. Indeed, none of the other evidence of record
mentions Applicant at all, let alone identifies Applicant as the source of the video
clip.
To the extent Applicant is raising a “secondary source” argument or positing
that SNEEZING BABY PANDA has acquired distinctiveness for any of its
identified goods and services based on the movie and video clip, neither principal
applies here. “Secondary source” arguments usually are raised in response to a
refusal that the proposed mark is used in a merely ornamental fashion and
therefore does not function as a mark, pursuant to Sections 1, 2 and 45 of the
Trademark Act. That refusal is entirely different from the Section 2(e)(1) refusal
here at issue. Further, Applicant has not amended its application to seek

21 App. Br. p. 18, 9 TTABVUE 22.
22 App. Br. p. 15, 9 TTABVUE 19.
Serial No. 79123938
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registration based on acquired distinctiveness pursuant to Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f).
In reaching our conclusion that SNEEZING BABY PANDA is merely descriptive
of the goods identified in Classes 9, 16, 21 and 28, and the services identified in
Class 41, we are cognizant of the dissent’s opinion, which relies on In re WNBA
Enterprises LLC, 70 USPQ2d 1153, 1156 (TTAB 2003). We distinguish that case,
and do not find it persuasive here.
In WNBA, the Board found that “in the same manner that ‘ORLANDO
MIRACLE’ is inherently distinctive when used in connection with the applicant’s
entertainment services, namely, its basketball team, the mark is inherently
distinctive when used in connection with applicant’s printed publications that
feature information pertaining to the sport of basketball and featuring applicant’s
basketball team.” The dissent argues that SNEEZING BABY PANDA is Applicant’s
service mark, identifying its film production services, and reasons that this is a
similar circumstance to WNBA. Thus, the dissent contends that Applicant’s
intended use of SNEEZING BABY PANDA for the various collateral goods is not
merely descriptive. However, this case differs from WNBA in that ORLANDO
MIRACLE does not describe anything about the “entertainment services in the
nature of presentations of women's basketball games” identified in that registration
except that the basketball team is located in Orlando (which has been disclaimed as
geographically descriptive). The word MIRACLE is arbitrary when used in
conjunction with the identified entertainment services. It follows that if ORLANDO
Serial No. 79123938
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MIRACLE is arbitrary with respect to the entertainment services, it also is
arbitrary for the collateral merchandise, including printed materials about that
team. By contrast, as discussed above, the designation SNEEZING BABY PANDA
is merely descriptive of the subject matter of the films, television programs and
theatrical productions with which it is intended to be used.
Finally, we note Applicant’s argument that “its compound mark ‘Sneezing Baby
Panda’ is not descriptive, because the combination of terms, composed of three two-
syllable words, possesses a special rhythmic quality creating a unitary mark.”23 We
do not find this argument persuasive. Even assuming, for the sake of argument,
that SNEEZING BABY PANDA is unitary, as discussed above, the entirety of the
phrase is merely descriptive for the goods identified in Classes 9, 16, 21 and 28 and
the services identified in Class 41, and therefore remains unregistrable. See, e.g., In
re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (laudatory
unitary phrase THE BEST BEER IN AMERICA for beer and ale unregistrable).
Decision: The refusal to register Applicant’s mark SNEEZING BABY PANDA
pursuant to Section 2(e)(1) is affirmed as to Classes 9, 16, 21, 28 and 41 and
reversed as to Classes 25 and 35. In addition, the refusals to register pursuant to
Section 2.61 are reversed. As noted, this appeal did not involve the goods identified
in Classes 3, 5 and 30. Applicant’s mark accordingly will proceed to registration in
Classes 3, 5, 25, 30 and 35.

23 App. Br. p. 19, 9 TTABVUE 23.
Serial No. 79123938
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Dissent By:
Bergsman, J., dissenting.
The basis for the merely descriptive refusal is that the goods and services at
issue feature images and/or information about a sneezing baby panda.24 However,
under the circumstances of this case, SNEEZING BABY PANDA is Applicant’s
service mark, not a descriptive term. Our holding in In re WNBA Enterprises LLC,
70 USPQ2d 1153, 1156 (TTAB 2003) is on point.
However, in the same manner that “ORLANDO
MIRACLE” is an inherently distinctive trademark when
it is used in conjunction with applicant's entertainment
services, it is an inherently distinctive trademark for
applicant's publications. “ORLANDO MIRACLE” is not
merely descriptive of applicant's publications because it
does not name the subject matter of them. To the
contrary, whereas the subject matter of applicant's
publications can be characterized as news about
applicant's entertainment services, “ORLANDO
MIRACLE” is the mark by which applicant identifies the
source of the publications, in the same manner that it is
the mark under which applicant renders its services. It is
not the name of applicant's goods or applicant's services,
nor is it a term which merely describes them.
Likewise, SNEEZING BABY PANDA is the mark by which Applicant identifies
and intends to identify the source of its goods and services; it is not a term that
merely describes them. Specifically, there is nothing inherent in the term
SNEEZING BABY PANDA that conveys a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is intended to be used. See In re Colonial Stores, Inc., 157 USPQ at 384

24 11 TTABVUE 10.
Serial No. 79123938
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(“One of the tests to determine whether a given mark is ‘merely descriptive’ under
the Act is based upon what it would mean to the potential consumer when applied
to applicant’s goods.”). For example, consumers encountering SNEEZING BABY
PANDA brand “publications, namely, magazines, hand-outs and workbooks in the
field of animals, nature and the environment” or “television programs and
documentary films” will perceive SNEEZING BABY PANDA as a trademark, not a
descriptive term, because when the terms of the mark are considered as a whole,
they form a unique expression that without some analysis suggests that the content
of Applicant’s goods and services may include a sneezing baby panda. In other
words, consumers must make a mental leap from the mark to the product. The
immediate impression evoked by the mark stimulates an association with the
Internet video sensation created by Applicant. As such, on the record before us, the
mark, along with the favorable suggestion which it evokes, functions as a
trademark and not as a term which merely describes the goods and services.
The cases relied on by the Trademark Examining Attorney and the majority for
the proposition that a mark that describes the subject matter of a television or
similar entertainment program is merely descriptive of the program are
inapplicable because SNEEZING BABY PANDA is an arbitrary phrase that does
not describe any quality, characteristic, function, feature, purpose or use of the
specified goods or services. For example, the Trademark Examining Attorney relies
on In re Conus Commc’ns Co., 23 USPQ2d 1717 (TTAB 1992), where the Board held
that the term ALL NEWS CHANNEL is generic for a television channel
Serial No. 79123938
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broadcasting all news because a viewer seeing that term would understand it as the
apt descriptive language for a type of television channel. “The words chosen by
applicants as their mark generically describe their broadcasting and production
services of which the entire subject matter is the news.” Id. at 1719. The Trademark
Examining Attorney also cites to THE WEATHER CHANNEL which was held to be
a generic term for a television transmission whose subject matter exclusively
concerns the weather. In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986).
In the case before us, SNEEZING BABY PANDA is an arbitrary term that
identifies Applicant’s creation. Thus, SNEEZING BABY is not merely descriptive.
To hold to the contrary would lead to the inequitable
result that this applicant, as well as the owners of
countless registrations for other marks covering their
primary goods or services, could not register their marks
in connection with printed materials relating to their
primary goods or services without resorting to a claim of
acquired distinctiveness under Section 2(f) of the Act.
In re WNBA Enterprises LLC, 70 USPQ2d at 1156.
In view of the foregoing, the mark SNEEZING BABY PANDA is not merely
descriptive of the goods and services identified in the application and the refusal to
register under Section 2(e)(1) of the Trademark Act should be reversed.