A La Vieille Russie, Inc.

Trademark Trial and Appeal Board

Jul 20, 2001

No. 75609153 (T.T.A.B. Jul. 20, 2001)

07/20/01
Paper No. 12
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re A La Vieille Russie, Inc.
________

Serial No. 75/609,153
_______

William S. Frommer and Marilyn Matthes Brogan of Frommer Lawrence & Haug
LLP for A La Vieille Russie, Inc.

Gina M. Fink, Trademark Examining Attorney, Law Office 103 (Daniel P.
Vanovese, Acting Managing Attorney)
_______

Before Bottorff, Holtzman and Drost, Administrative Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register pursuant to
Trademark Act Section 2(f), 15 U.S.C. §1052(f), or, alternatively, on the
Supplemental Register, of the mark RUSSIANART, in typed form, for services
recited in the application as “dealership services in the field of fine art, antiques,
furniture and jewelry.”1[1]

1[1] Serial No. 75/609,153, filed December 21, 1998. The
application is based on use in commerce, with use of the mark
alleged since June 5, 1941. Applicant filed its provisional
amendment to the Supplemental Register on June 13, 2000.
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

The Trademark Examining Attorney has refused registration on the
Principal Register, finding that applicant’s mark is merely descriptive of the
recited services under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and
rejecting applicant’s Section 2(f) claim of acquired distinctiveness. The
Trademark Examining Attorney also has refused registration on the
Supplemental Register, on the ground that applicant’s mark is generic for the
recited services and thus is incapable of distinguishing applicant’s services. See
Trademark Act Section 23, 15 U.S.C. §1091. Finally, the Trademark Examining
Attorney has refused registration on the basis that applicant’s specimens are
unacceptable as evidence of service mark use of the mark sought to be registered.
Applicant has appealed each of the Trademark Examining Attorney’s
refusals. Applicant and the Trademark Examining Attorney filed main appeal
briefs, and applicant filed a reply brief. No oral hearing was requested. After
careful consideration of the arguments and evidence presented, and for the
reasons discussed below, we affirm the refusals to register.
Applicant’s Section 2(f) claim of acquired distinctiveness, which applicant
made in the original application, is a concession that the mark is not inherently
distinctive and that it therefore is not registrable on the Principal Register absent
a sufficient showing of acquired distinctiveness. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In re Cabot
Corp., 15 USPQ2d 1224 (TTAB 1990); see also TMEP §1212.02(b). Thus, although
both applicant and the Trademark Examining Attorney have presented
arguments on the issue, mere descriptiveness is not an issue in this appeal.2[2]
Rather, in this appeal we must decide: (a) whether applicant’s mark is generic
and thus unregistrable on either the Principal Register or the Supplemental
Register; and (b) if the mark is deemed to be not generic but rather only merely

2[2] Applicant’s Section 2(f) claim in the application was not
made provisionally or in the alternative. Therefore, under the
authorities cited above, applicant has conceded that its mark is
merely descriptive and is not entitled to argue, as it does in
its briefs, that the mark is inherently distinctive. In any
event, applicant’s arguments in support of its inherent
distinctiveness claim are unpersuasive. The numerous unpublished
Board decisions cited by applicant are not precedential authority
in this proceeding, nor are they particularly on point.
Applicant’s primary argument appears to be that applicant seeks
registration of the “unitary” term RUSSIANART, and that although
“Russian art” might be merely descriptive of a feature or
characteristic of applicant’s art dealership services, which
applicant admits include dealership in Russian art, RUSSIANART is
not merely descriptive. However, we find that the compound term
RUSSIANART is as merely descriptive as its constituent words,
“Russian art.” See In re Abcor Development Corporation, 588 F.2d
811, 200 USPQ 215 (CCPA 1978) (GASBADGE merely descriptive of
“device to determine and monitor personal exposure to gaseous
pollutants”); and In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED merely descriptive of jellies and jams).
descriptive, then is applicant’s showing of acquired distinctiveness sufficient to
allow for registration of the mark on the Principal Register pursuant to
Trademark Act Section 2(f), or is the mark instead registrable only on the
Supplemental Register.
We shall address the genericness issue first. “A generic term is the
common descriptive name of a class of goods or services…” H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986).

The critical issue in genericness cases is
whether members of the relevant public
primarily use or understand the term sought to
be protected to refer to the genus of goods or
services in question. Determining whether a
mark is generic therefore involves a two-step
inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought
to be registered or retained on the register
understood by the relevant public primarily to
refer to that genus of goods or services?

Id. (Citations omitted.)
Thus, our first task under Marvin Ginn is to determine, based on the evidence of
record, what is the genus of services in which the specific services rendered by
applicant are properly classified.
In its application, applicant has identified its services as “dealership
services in the field of fine art, antiques, furniture and jewelry.” Based on the
evidence of record, however, we find that this recitation of services is
insufficiently definite to serve as the name of the genus of applicant’s services,
for purposes of our genericness analysis in this case. The evidence shows that
“Russian art” is a distinct genre or type of art for which there is a defined
commercial market, and that applicant, and others, are known and referred to
generically as dealers in Russian art. Therefore, we find that the genus of
services involved in this case is “art dealership services in the field of Russian
art,” rather than merely “art dealership services” or, as applicant has argued,
merely “dealership services.”3[3]
The evidence of record includes a printout of applicant’s website,4[4] made
of record by the Trademark Examining Attorney, in which applicant identifies
“Russian Works of Art” as one of the categories of products it deals in. The
website also reprints an article from ANTIQUE International concerning

3[3] We note that “genus” is defined as “a class, kind, or group marked by common
characteristics or by one common characteristic; specif : a category of biological
classification ranking between the family and the species…” Webster’s Ninth New
Collegiate Dictionary (1990) at 513. In a normal taxonomic system comprised of, from
most inclusive to least inclusive, the categories of kingdom, phylum, class, order, family,
genus and species, and in which, for our purposes, the kingdoms would be “goods” and
“services,” applicant’s suggested category of “dealership services” would properly be
placed at a much higher and more inclusive level than “genus.” “Dealership services”
necessarily would include services, such as “automobile dealership services,” which are
not in applicant’s field and which have little or nothing in common with applicant’s
services. Likewise, given the evidence of record which shows that there is a distinct
commercial market for Russian art, and that there are art dealers who specialize in that
field, “art dealership services” is too broad and inclusive to properly be deemed a
“genus” within the kingdom of “services.” Cf. Marvin Ginn, supra, in which the court
found the applicable genus of goods to be not merely “magazines,” but rather the
defendant’s particular “class of magazines,” i.e., “magazines directed to the field of
firefighting.”

applicant, in which applicant’s business is referred to as “a gallery renowned for
its exquisite jewellery and Russian works of art,” and which refers generally to
“the market for Russian art” (i.e., “There have been changes in the market for
Russian art, thanks to the opening up of the former Soviet Union…”). The
ANTIQUE International article appears to be based on an interview with one of
applicant’s principals, Peter Schaffer, who states therein: “We are very pleased
with the recommendations we get from other dealers around town and around
the world in Russian art.” (Emphasis added).
In addition, the Trademark Examining Attorney has made
of record excerpts of articles obtained from the NEXIS
database which identify “Russian art” as a commercially

4[4] The URL is http://www.alavieillerussie.com/sschaffer.html,
which was accessed and printed by the Trademark Examining
Attorney on February 3, 2000.
distinct type or genre of art, and which refer to applicant
and to others as dealers therein (emphasis added):

“Peter Schaffer, one of the owners of A La Vieille
Russie, Russian art dealers in New York, said he
had seen only one other such skeleton chair, at
the Hermitage’s Ethnographic Museum in St.
Petersburg.” (The New York Times, January 19,
1992);

“… said Mr. Schaffer, the dealer in Russian art and objects. … Mr.
Schaffer, the dealer in Russian art, agreed. ‘The armory is like no
other place in the world,’ he said.” (The New York Times, March 6,
1998);

“‘After 1988, for about three years, anything that came from over
there you could sell,’ said Elena Kornetchuk, a Pennsylvania gallery
owner who has been dealing in Russian art for more than 20 years.
(The Florida Times Union, October 22, 1998);

“Lucy Maxym, noted author and Russian art dealer, will be the
featured speaker at a Fine Arts Club program Tuesday at the
Arkansas Arts Center. Maxym has made her name by her
involvement with Russian lacquer miniature painting. In her 75
trips to Russia, Maxym has established personal contact with the
artists who create fantastic lacquer boxes…” (Arkansas Democrat-
Gazette, May 20, 1994);

“Washington art dealer Alla Rogers, who specializes in Eastern
European and Russian art…” (The Washington Times, December
15, 1994);

“… grand opening of its Russian Art Room on Thursday night,
featuring Russian art from the ‘50s and ‘60s. … The two purchased
the collection from a Russian art dealer.” (The Arizona Republic,
October 24, 1993); and

“That’s what Russian art dealers say about Russian artist Phelix
Scherman, whose work can be seen at Bell Gallery through May 17.”
(The Commercial Appeal (Memphis), May 1, 1993);

“Vladimer’s Studio and Collection … showcases traditional Russian
art and jewelry originals.” (Press Journal (Vero Beach, FL),
November 13, 1998);

“The Russian Place … is a quaint shop with other Russian art,
including icons…” (Chicago Daily Herald, September 11, 1997);

“As one of the original merchants in Trump Tower, he opened …
The Rose Tree, which focused on Russian art.” (The Orlando
Sentinel, September 24, 1998);

“There’s also the Pushkin Museum of Fine Art, which houses
Rembrandts and Botticellis, and the State Tretyakov Gallery, which
houses the largest collection of Russian art.” (Incentive, June 1998);

“Fearing more fakes, the Gelos auction house and several top private
galleries in Moscow are working hard to establish foolproof ways of
authenticating the pieces of art they sell. British art historian Polly
Gray, an expert in Russian art from Oxford University, says that
many private dealers now ask experts from the top state-run
museums, such as the Tretyakov Gallery, to examine and vouch for
paintings before they go on sale to private buyers.” (Los Angeles
Times, February 9, 1998);

“But referring to LeMond’s twelve-thousand–square-foot manse as a
house is as much a misnomer as calling his frenetic lifestyle
‘retirement.’ Filled with expensive antiques and Russian art, it is
also home to countless glittering awards…” (MPLS-St.Paul
Magazine April, 1998);

“WEISMAN SHOW FEATURES COLD WAR-ERA ART - … still not
well known here. Even Weisman director Lyndel King, who has
organized other Russian art shows, said she had never heard of Sots
art when the show was first proposed by guest curator Regina
Khidekel. ‘It’s not well known in this country at all,’ King said. ‘A
few dealers have it and some private collectors. There’s a collection
of non-official Russian art at Rutgers University and some in
galleries in New York and elsewhere.” (Star Tribune (Minneapolis,
MN), January 16, 1999); and

“‘Our evolution was cut short in 1917, so now people are trying to
continue what should be continued,’ says Aidan Salakhova, a
Moscow fine art dealer who can hardly satisfy the appetite for 18th
and 19th century Russian art to grace the new mansions.” (Denver
Rocky Mountain News, December 23, 1994).

Based on this evidence, we find that there is a distinct commercial market
for “Russian art,” and that applicant, and others, are dealers therein. A buyer
wishing to invest in or collect Russian art need not go to just any art dealer;
rather, such a buyer could go to a dealer specializing in Russian art, such as
applicant. Thus, the genus of services involved in this case is “art dealership
services in the field of Russian art.”
Having identified the genus of services involved
herein as “art dealership services in the field of Russian
art,” we next must determine whether the term applicant
seeks to register, i.e., RUSSIANART, is understood by the
relevant public primarily to refer to that genus of
services. Marvin Ginn, supra. In making that
determination in this case, two principles apply.
First, where the mark sought to be registered is a
compound term “formed by the union of words,” the term may
be found generic if the evidence of record shows that “the
public understands the individual terms to be generic for a
genus of goods or services, and the joining of the
individual terms into one compound word lends ‘no
additional meaning to the term.’” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2001), quoting from In re American Fertility Society,
188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999).

In other words, if the compound word would plainly have no
different meaning from its constituent words, and dictionaries, or
other evidentiary sources, establish the meaning of those words to be
generic, then the compound word too has been proved generic. No
additional proof of the genericness of the compound word is
required.

In re American Fertility Society, supra, 51 USPQ2d at 1836.
See also In re Gould Paper Corp., 834 F.2d 1017, 1018, 5
USPQ2d 1110 (Fed. Cir. 1987)(SCREENWIPE, a compound term
composed of generic words SCREEN and WIPE, itself is
generic for “pre-moistened, anti-static cloth for cleaning
computer and television screens”).
Applying this first principle to the facts of the present case, we find that
RUSSIANART, the term applicant seeks to register, is a “compound term[]
formed by the union of words,” i.e., by the union of the words RUSSIAN and
ART. We further find that the compound term RUSSIANART “would plainly
have no different meaning from its constituent words,” RUSSIAN and ART.
That is, the words “Russian art” are not lent any additional meaning simply by
virtue of their having been combined into the compound term RUSSIANART.
Applicant has suggested no such other or additional meaning that results from
the compression of the two words into one, and we are aware of none.
Therefore, pursuant to the authorities discussed above, if the evidence of record
establishes that “Russian art,” as applied to applicant’s services, is generic under
Marvin Ginn’s two-step inquiry, then the evidence also suffices to establish the
genericness of the compound term RUSSIANART.
The second principle applicable to our genericness determination in this
case is that a term which is generic for a particular class of goods is also deemed
to be generic for the services of selling those goods. See, e.g., In re Log Cabin
Homes Ltd., 52 USPQ2d 1206 (TTAB 1999)(LOG CABIN HOMES generic for
“architectural design of buildings, especially houses, for others,” and “retail
outlets featuring kits for constructing buildings, especially houses”); In re Bonni
Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987)(LA LINGERIE generic for
“retail store services in the field of clothing”); In re Wickerware, Inc., 227 USPQ 970
(TTAB 1985)(WICKERWARE generic for “mail order and distributorship services
in the field of products made of wicker”); and In re Half Price Books, Records,
Magazines, Incorporated, 225 USPQ 219 (TTAB 1984)(HALF PRICE BOOKS
RECORDS MAGAZINES generic for “retail book and record store services”). Cf.
In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir.
1985)(BUNDT generic for a “ring cake mix” despite fact that evidence showed
generic use of term only for a type of cake, and not for a cake mix).
Applying this second principle to the facts of this case, we find that
RUSSIANART (the compound term formed from the words RUSSIAN and ART;
see In re Gould Paper, supra) is generic as applied to applicant’s services. The
evidence of record, discussed above, clearly shows that “Russian art” is a generic
name for a certain type of art which is sold by applicant and by other art dealers.
Therefore, pursuant to the authorities cited above, “Russian art,” or the legally
equivalent compound term RUSSIANART, also is generic for applicant’s services
of selling such art.
Thus, based on the evidence of record, and for the reasons discussed
above, we find that RUSSIANART is generic for applicant’s recited services, and
that it is incapable of distinguishing applicant’s services from the similar services
of others. The designation therefore is not registrable on either the Principal
Register or the Supplemental Register. See Trademark Act Sections 2(e)(1) and
23, 15 U.S.C. §§1052(e)(1) and 1091.
Because we have found applicant's RUSSIANART designation to be
generic as applied to the services recited in the application, applicant's claim that
the designation is registrable on the Principal Register pursuant to Section 2(f) is
unavailing. That is, because the designation is generic and incapable of
functioning as a service mark, no amount of evidence of acquired distinctiveness
would be sufficient to warrant its registration as a mark. See, e.g., H. Marvin Ginn
Corp., supra, 782 F.2d at 989, 228 USPQ at 530. In the interest of completeness,
however, we will decide whether applicant's evidence of acquired distinctiveness
would be sufficient, if applicant's designation were to be determined not to be
generic, to warrant registration of the designation under Section 2(f).
Even if RUSSIANART were not deemed to be generic for applicant’s
services, we find that the evidence of record, discussed above, establishes that
the term is very highly descriptive of those services. Accordingly, a relatively
greater quantum and quality of evidence of acquired distinctiveness is required
in order to support a finding that the term is registrable under Section 2(f). See
Yamaha International v. Hoshino Gakki, supra, 6 USPQ2d at 1008. Applicant’s
evidence of acquired distinctiveness in this case falls far short.
Applicant’s acquired distinctiveness claim is based on its alleged
substantially exclusive and continuous use of the term RUSSIANART in
commerce for at least the five years preceding the filing date of the application;
earlier in the application, applicant alleges use of the term in commerce since
1941. However, there is no evidence in the record from which we can ascertain
the manner or extent of applicant’s use of RUSSIANART. The only evidence in
the record demonstrating the manner of applicant’s use of the designation is the
specimen brochure (which bears a 1996 copyright notice) submitted with the
application. As discussed more fully below in connection with the Trademark
Examining Attorney’s specimen refusal, applicant’s use of RUSSIANART on
these specimens is inconspicuous and merely informational. RUSSIANART does
not appear at all on applicant’s website, at least not on the portions which have
been made of record. On both the specimens and the website, applicant uses
other designations in the manner of marks both repeatedly and prominently, i.e.,
its A LA VIEILLE RUSSIE name, and the initials derived therefrom, ALVR, in
conjunction with a logo.
We find that the evidence of record concerning applicant’s use of the
designation RUSSIANART is insufficient to establish that this term, which is at
the very least highly descriptive, has acquired distinctiveness. Thus, and
assuming arguendo that the term is not generic but rather is merely descriptive,
we reject applicant’s claim of entitlement to registration on the Principal Register
under Section 2(f).
We turn finally to the Trademark Examining Attorney’s
specimen refusal. Applicant’s specimen is a brochure, the
two inside pages of which feature photographs of gemstones
and jewelry and two columns of text containing general
information about gemstones and jewelry, along with an
invitation to visit applicant’s store in New York City.
Centered at the bottom of the second column of text on the
right-hand inside page of the brochure appears the
following:
A LA VIEILLE RUSSIE
(AH LAH VEE-AYE ROOSE)
781 Fifth Avenue, New York, NY 10022
(212)752-1727 RussianartSM ALVR1@AOL.COM

The Examining Attorney contends that the matter sought to be registered, i.e.,
RUSSIANART, as it is displayed on this specimen, would not be perceived as a
mark but solely as informational matter describing the goods in which applicant
deals.
We agree. On these specimens, RUSSIANART is not displayed in the
manner of a mark, but rather appears amid and as part of other informational
matter, i.e., applicant’s trade name, street address, phone number, and e-mail
address. Applicant’s name appears in bold and somewhat larger type, but the
other matter, including the “Russianart” designation, appear in the same size
and font of type as the rest of the brochure text. Applicant’s use of the “SM”
symbol is not dispositive, nor does it suffice in this case to transform applicant’s
use of RUSSIANART, buried as it is amid other informational matter, into service
mark use. See generally In re B.C. Switzer & Co., 211 USPQ 644 (TTAB 1981); and
TMEP §1301.02. Accordingly, we affirm the Trademark Examining Attorney’s
requirement for substitute specimens and her refusal to register on the ground
that the specimens submitted by applicant do not evidence use of the matter
sought to be registered as a service mark. See Trademark Act Sections 1, 2, 3 and
45, 15 U.S.C. §§1051, 1052, 1053 and 1127; and TMEP §§905.12 and 1301.04.

Decision: The refusals to register the mark on the Principal Register and on the
Supplemental Register are affirmed.

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