AICAD S.n.C. of Luca PEDROTTI & C.

Trademark Trial and Appeal Board

Aug 31, 2000

No. 75320218 (T.T.A.B. Aug. 31, 2000)

Paper No. 20
GFR
8/31/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AICAD S.n.c. of Luca PEDROTTI & C.
________
Serial No. 75/320,218
_______
Herbert I. Cantor of Evenson, McKeown, Edwards & Lenahan,
P.L.L.C. for AICAD S.n.c. of Luca PEDROTTI & C.
Terria P. Hicks, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
_______
Before Hanak, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
AICAD S.n.c. of Luca PEDROTTI & C. [Aicad] has filed
an application to register LIZARD AICAD as a trademark in
International Class 25 for goods identified by amendment as
"Footwear, namely sandals and moccasins, not made of
reptile skin and not simulating reptile skin; T-shirts."1

1 Serial No. 75/320,218, filed July 7, 1997, based on applicant's
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/320,218
2
The Trademark Examining Attorney has made final a
refusal of registration on two grounds: that applicant's
mark is deceptively misdescriptive of the composition or a
feature of applicant's footwear2, and thereby barred from
registration by Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), and that applicant's mark is deceptive,
and thereby barred from registration by Section 2(a) of the
Act, 15 U.S.C. §1052(a). Applicant has appealed both
grounds for refusal. Briefs were filed; and the applicant
filed but subsequently withdrew a request for an oral
hearing.3
The test for determining whether a mark is deceptively
misdescriptive under Section 2(e)(1) requires us to
determine (1) whether the matter sought to be registered
misdescribes the goods and, if so, (2) whether any

2 The Examining Attorney has expressly not refused registration
of applicant's mark as used for "T-shirts". However, applicant
did not request division of its application prior to filing its
appeal.
3 The Examining Attorney has not raised any question about the
registrability of the AICAD portion of applicant's mark and
accepts it as "a coined, fanciful term with no meaning." Rather,
the Examining Attorney argues that LIZARD is the dominant term in
the mark and, thus the mark as a whole is unregistrable.
Applicant admits that LIZARD is misdescriptive of applicant's
goods but, noting that it is only one term in a composite mark,
denies that the mark as a whole is misdescriptive. The question
whether the deceptive misdescriptiveness refusal could be
overcome with a disclaimer of LIZARD has not been raised by
either applicant or the Examining Attorney and, therefore, is not
before us. Moreover, a disclaimer would not obviate the
Ser. No. 75/320,218
3
prospective purchaser is likely to believe the
misdescription. In re Quady Winery Inc., 221 USPQ 1213,
1214 (TTAB 1984).
The test for determining whether a mark is deceptive
under Section 2(a) restates the two-part Quady test and
adds a third prong: If the term is misdescriptive and
prospective purchasers are likely to believe that the
misdescription actually describes the goods, is the
misdescription likely to affect the decision to purchase?
See In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8
USPQ2d 1259, 1260 (Fed. Cir. 1988).
Applicant concedes that LIZARD is misdescriptive of
applicant's footwear, so the first prong of the Quady and
Budge tests is met. Applicant and the Examining Attorney
disagree, however, on the second prong of the Quady and
Budge tests, i.e., whether consumers would believe the
misdescription.
In support of her refusal of registration, the
Examining Attorney has made of record the following
evidence: dictionary definitions for "lizard," one of
which is "[l]eather made from the skin of a lizard" and
another which is "leather made from the skin of the lizard,

deceptiveness refusal. American Speech-Language-Hearing Ass'n v.
National Hearing Aid Soc., 224 USPQ 798 (TTAB 1984).
Ser. No. 75/320,218
4
used for shoes, purses, etc."; dictionary definitions for
the terms "sandal" and "moccasin"; excerpts from Modern
Footwear Materials & Processes A Topical Guide to Footwear
Technology by Walter E. Cohn [© 1969; hereinafter Guide to
Footwear]; five excerpts retrieved from the NEXIS database
of periodicals; and two references retrieved from three
searches of the Internet. The applicant, in its response
to the initial refusal of registration, filed copies of a
brochure illustrating the general nature of its goods
although not showing any goods identified by the mark in
the involved application.4
The Examining Attorney argues that this evidence
satisfies the second prong of the Quady and Budge tests
because it establishes (1) that lizard skin is a highly
desirable material for shoes, including sandals and
moccasins, and (2) that purchasers "are accustomed to
seeing 'lizard' associated with the making of shoes."
In reply, applicant states "[t]hese are not points of
contention between the Applicant and the Examining
Attorney." While this may appear to be a concession that
the Examining Attorney has met the second prong of the

4 We note that the brochure shows use of the term LIZARD alone
and with the ® statutory registration symbol appended thereto.
The statutory registration symbol used to show registration of a
mark in the United States may be used only after a registration
has issued, and even then, only for the mark actually registered.
Ser. No. 75/320,218
5
Quady and Budge tests, the applicant goes on to state that,
in view of the limitation in the identification of goods,
"[t]he point of contention… is whether it is likely that a
potential purchaser of Applicant's sandals and moccasins
would believe that they were actually made of lizard skin."
Thus, it is clear that the applicant believes the Examining
Attorney has not met the second prong of the Quady and
Budge tests.
Applicant argues that its goods, as illustrated by the
brochures it has made of record, are "rugged sporting type
sandals and moccasins" for outdoor activities and would not
commonly be thought of by consumers of such goods as likely
to be made of reptile or lizard skin. However, applicant's
identification of goods is not limited to sporting-type
sandals and moccasins. Moreover, this application is based
on intent-to-use the mark in commerce and applicant has not
filed an amendment to allege use. The brochures are of
limited probative value because they show use of LIZARD but
do not show use of the mark LIZARD AICAD. Thus, the
brochures are not evidence that applicant's mark LIZARD
AICAD is used for the sporting-type sandals and moccasins
illustrated therein. We have considered, as we must,
applicant's goods to include all types of sandals and
moccasins, e.g., those for rugged outdoor activities, those
Ser. No. 75/320,218
6
for leisure wear, and those for high fashion wear, among
others.
We turn our consideration to the evidence submitted by
the Examining Attorney in support of her burden of proof.
The dictionary definitions and references from the Guide to
Footwear indicate that leather made from lizard skin may be
used for shoes. This, alone, does not establish that the
public would be aware of the materials from which their
footwear is made or would believe that applicant’s footwear
is made of lizard skin.
The five NEXIS references range from 1985-1996. There
is one NEXIS reference for "lizard moccasins", and four
references for "lizard sandals." However, these references
are few in number and years passed between each of them.
An occasional reference in a mass-market periodical every
few years does not establish that purchasers of sandals and
moccasins would be aware of the materials from which their
footwear is made, or that footwear may be made from lizard
skin.
In her brief, the Examining Attorney argues that "The
search results from the [Internet] YAHOO! and ALTA VISTA
search engines demonstrate over twenty (20) websites for
Ser. No. 75/320,218
7
lizard sandals and shoes."5 However, we find only one such
reference which shows a grainy photograph of shoes and an
printout that lists the following: "Exotic Boots Ltd.-
western boots from the traditional styles to the more
exotic ostriich [sic], snake skin, shark, crocodile, lizard
and alligartor [sic]."
The dictionary definitions, together with the NEXIS
references and Internet print-outs, do not establish
whether the public is aware that footwear may be made from
lizard skin, and, thus, whether they would believe that
applicant’s footwear is made from lizard skin. This
evidence certainly does not allow us to conclude, as the
Examining Attorney argues, that consumers of sandals and
moccasins are "accustomed" to finding sandals and moccasins
made of lizard skin in the marketplace.
Applicant states that lizard skin products have "a
distinctive mottled appearance." As identified,
applicant's footwear is not made of reptile skin, nor does
it simulate reptile skin.6 Any purchaser of moccasins or

5 A mere list of website "hits" returned when a search of the
Internet is performed for certain terms is of little, if any,
value. It is the printouts of the websites themselves that may
have probative value.
6 Reptile, by dictionary definition, includes "turtles, lizards,
snakes, crocodilians, and the tuatara." 1121 The Random House
College Dictionary (Revised Ed. 1982).
Ser. No. 75/320,218
8
sandals who is familiar with the actual appearance of
lizard skin would not be likely to believe that applicant's
goods are made of lizard skin, because such a purchaser
presumably would recognize its appearance and, thus, not
believe mistakenly that footwear not simulating lizard skin
was, is fact, lizard skin.
Moreover, as stated above, there is insufficient
evidence in the record to establish that the public is
aware that footwear may be made from lizard skin and
whether the public would believe that applicant’s footwear
is made from lizard skin regardless of its appearance.
Thus, there is insufficient evidence for us to conclude
that a prospective purchaser of sandals or moccasins, not
familiar with the use of lizard skin as a footwear
material, would, when encountering applicant's goods,
mistakenly believe that they were made of such material.
We are not convinced otherwise by the Examining
Attorney’s hypothetical argument that a consumer might very
well conclude that applicant had used lizard skin in the
manufacture of its goods but had treated it in such a
manner as to vitiate the normal appearance of the skin.
Implicit in this argument is the Examining Attorney's
assumption that any consumer would know what lizard skin
looked like and, when confronted with applicant's footwear
Ser. No. 75/320,218
9
not made of or simulating lizard skin, would conclude that
the goods are lizard skin and that applicant had treated
the lizard skin so that it no longer looked like lizard
skin. While the Guide to Footwear establishes that buffing
or plating of leather can smooth its grain, the Examining
Attorney has presented no evidence that such processes
would be applied to lizard skin to such an extent that it
would cease to be recognized as such. Moreover, we find
the consumer thought process posited by the Examining
Attorney to be both conjecture and unlikely. Based on the
record before us, we agree with applicant's argument that
it is more likely that consumers would view the term LIZARD
as suggestive of the grip that users would experience when
wearing applicant's sandals and moccasins.
The Examining Attorney correctly states that "the mark
standing alone" must not be deceptively misdescriptive or
deceptive, and that a disclaimer or limitation on labelling
or in the identification of goods cannot alone remove a
mark from being deceptively misdescriptive or deceptive.
See Budge, supra, 8 USPQ2d at 1261. However, this case
differs from the Budge case in that the Examining Attorney
has not established the second prong of the test, namely,
that prospective purchasers would be likely to believe the
misdescription.
Ser. No. 75/320,218
10
This case also differs from the case cited by the
Examining Attorney, In re Woodward & Lothrop Inc., 4 USPQ2d
1412 (TTAB 1987). In that case, the Board concluded that a
disclaimer in the identification of goods regarding the
nature of the material composition of the goods was
insufficient because the record in that case established
that prospective purchasers would believe that “cameo”
describes the composition of the goods and that sales of
the product could occur without giving prospective
purchasers an opportunity to view the goods. Id. at 1414.
In this case, the evidence does not establish that
prospective purchasers of applicant’s goods would
mistakenly believe that goods are made of lizard skin.
In conclusion, the Examining Attorney has not
satisfied the second prong of the Quady and Budge tests and
each of the grounds for refusal fail. It is unnecessary
for us to consider the third prong of the test for the
issue of deceptiveness.
We acknowledge that, in an inter partes context,
competitors of applicant might be able to build a different
record which would support a refusal of registration. The
record presented by the Examining Attorney, however, falls
short.
Ser. No. 75/320,218
11
Decision: The refusals on the ground that applicant's
mark is deceptively misdescriptive and on the ground that
applicant's mark is deceptive both are reversed.
E. W. Hanak
C. E. Walters
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board