A & E Stores, Inc.

Trademark Trial and Appeal Board

Jan 26, 2001

No. 75224145 (T.T.A.B. Jan. 26, 2001)

1/26/01
Paper No. 14
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re A & E Stores, Inc.
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Serial No. 75/224,145
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Donna L. Mirman and Maria A. Savio of Gottlieb Rackman &
Reisman for A & E Stores, Inc.
David M. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Dan Vavonese, Acting Managing Attorney).
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Before Seeherman, Cissel and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
A & E Stores, Inc. has appealed from the refusal of the
Trademark Examining Attorney to register the stylized word
mark PAYHALF, as shown below, for “retail store services in
the field of clothing and footwear and related accessories,
costume jewelry and watches, handbags and small leather
goods, sunglasses, umbrellas and hair accessories.”1
1 Application Serial No. 75/224,145, filed January 10, 1997.
The application is based on asserted dates of first use and first
use in commerce on April 2, 1992.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/224,145
2
Registration has been refused pursuant to 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 its
services.
Applicant and the Examining Attorney have filed briefs.
An oral hearing was not requested.
We affirm the refusal of registration.
A mark is merely descriptive, and therefore prohibited
registration under Section 2(e)(1) of the Trademark Act, if
it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of a product or service. See In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). See also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
In support of his refusal, the Trademark Examining
Attorney has submitted dictionary definitions of “pay” and
“half.”2 From these entries, the Trademark Examining
Attorney argues that the use of these two ordinary English
language words as combined in the mark clearly and
unequivocally informs the potential purchaser of a
2 “Pay: [t]o give money to in return for goods or services
rendered”; “half: [o]ne part approximately equal to the remaining
part” The American Heritage Dictionary of the English Language,
(3d ed. 1992, electronic edition).
Serial No. 75/224,145
3
significant feature of applicant’s services – namely, that
“… shoppers in applicant’s establishment will PAY
approximately HALF of what is charged in other stores for
the identified goods.” (brief, p. 5).
Applicant argues that the mark does not immediately
convey any specific attribute of its services, and that at
worst, it is suggestive because it will take imagination,
thought or perception on the part of consumers to arrive at
a conclusion as to the nature of applicant's services.
Applicant argues that the Trademark Examining Attorney has
made no showing of use by other retailers of the term “Pay
Half” in a promotional manner and hence contends that
competitors would not be harmed should this mark proceed to
registration. Applicant also points to the third-party
registrations for PAYLESS shoes and retail shoe store
services. Finally, applicant notes that under Section
2(e)(1) of the Act, all doubts as to descriptiveness must be
resolved in applicant's favor.
In this case, applicant’s services are retail store
services, which necessarily include retail store services
offered by discounters. We agree with the conclusion of the
Trademark Examining Attorney that consumers will immediately
and unequivocally understand, when they view the mark in
connection with the identified services, that this mark
Serial No. 75/224,145
4
describes a discount store where one can expect to pay
approximately half the retail price being asked for the same
items at a non-discount store.
As for applicant’s argument that the Trademark
Examining Attorney has failed to make a showing of use by
other retailers of the term “Pay Half” in a promotional
manner, it is not necessary that the Trademark Examining
Attorney present such evidence to support a refusal based on
mere descriptiveness. The fact that the applicant may be
the first or only user of a descriptive designation does not
justify registration if that term is merely descriptive.
See In re National Shooting Sports Foundation, Inc., 219
USPQ 1018 (TTAB 1983). Moreover, the issue here is not
whether the term is generic, but whether, as applied to the
identified services, it is merely descriptive because it
immediately conveys information about them. As discussed
above, applicant’s mark does just that.
Applicant also argues that the United States Patent &
Trademark Office should treat this mark in the same manner
as the mark PAYLESS, for which it issued federal trademark
registrations for shoes and for retail shoe store services.
However, each case must be decided on its own facts, and
clearly the records supporting the PAYLESS trademark
registrations are not before us. Furthermore, we would note
Serial No. 75/224,145
5
in passing that the terminology “pay less” is fairly vague,
not imparting any definite information about how much one
would pay, and therefore may have been found to be only
suggestive of discount retail store services and goods.
PAYHALF, on the other hand, is much more specific, directly
telling consumers that the products are sold at half price.
The Trademark Examining Attorney cites to In re Half
Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB
1984) [HALF PRICE BOOKS RECORDS MAGAZINES (in special form)
for retail book and record store services was found to be so
highly descriptive as to be incapable of registration]. In
that case, the Board noted that the addition “… of the term
HALF PRICE to BOOKS RECORDS MAGAZINES, serves only to tell
people that one may purchase applicant’s books, records and
magazines at half the price one might have to spend
somewhere else.” supra, 225 USPQ at 221.
Accordingly, we have no doubt that the term PAYHALF is
merely descriptive for applicant’s retail store services.
Decision: The refusal of registration is affirmed.