Mailed:
May 15, 2007
jtw
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Attitudes in Dressing, Inc.
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Serial No. 78463616
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John C. Pokotylo of Straub & Pokotylo for Attitudes in
Dressing, Inc.
Peter Bromaghim, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).1
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Before Holtzman, Zervas and Walsh, Administrative Trademark
Judges.
Opinion by Walsh, Administrative Trademark Judge:
On August 6, 2004, Attitudes in Dressing, Inc.
(applicant) filed an application to register PREMIERE
COLLECTION in standard-character form on the Principal
Register for goods now identified as:
bags, namely dance gear bags (based on intent to use
in commerce), in International Class 18; and
women's and girl's dance, figure skating, gymnastic,
cheering and aerobics apparel and accessories, namely,
1 A different Examining Attorney acted on this application prior
to this appeal.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78463616
2
tights, body suits, leggings, tee shirts, shirts,
belts, shawls, shoulder wraps, leg warmers, and
liturgical dance clothing, namely leotards, pullovers,
skirts, hooded head wraps, blouses, pants, dresses,
briefs, unitards, sashes, apron tops and capes (based
on intent to use in commerce), and women's and girl's
dance, figure skating, gymnastic, cheering and
aerobics apparel and accessories, namely, warm ups,
leotards, skirts, wraps, pullovers, cover-ups,
sweaters, jumpers, jackets, pants, and shorts (based
on use in commerce), in International Class 25.
The Examining Attorney has refused registration on the
Principal Register on the ground that the mark merely
describes the goods under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1). Applicant argued against the
refusal in its response; the Examining Attorney made the
refusal final; and applicant appealed. Applicant and the
Examining Attorney have filed briefs. We affirm.
A term is merely descriptive of goods within the
meaning of Section 2(e)(1) if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods. See, e.g.,
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant’s goods in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute or function of the goods. See In re
Ser No. 78463616
3
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods identified in
the application, and the possible significance that the
term would have to the average purchaser of the goods
because of the manner of use or intended use. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods, then the resulting combination is
also merely descriptive. See, e.g., In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely
descriptive of commercial and industrial cooling towers).
The Examining Attorney argues that PREMIERE COLLECTION
is merely descriptive of the identified goods in both
classes. The Examining Attorney states, “First, the term
merely lauds the high quality and stylishness of the goods
by describing them as PREMIERE.” Examining Attorney’s
brief at 5. The Examining Attorney also argues that
PREMIERE is merely descriptive because it conveys the idea
Ser No. 78463616
4
that the line of goods is “…‘the first line of clothing’—an
‘introductory collection,’ a ‘debut collection’ or simply a
‘new collection,’ each of which merely describes to
consumers a quality or feature of the goods, namely, that
they are new.” Id. at 6. The Examining Attorney also
argues that COLLECTION is merely descriptive, if not
generic, as applied to the goods.
Applicant argues first that the Examining Attorney
failed to consider the identified goods in determining that
PREMIERE COLLECTION was laudatory. Applicant states,
“Indeed, in relation to the goods for which registration is
sought, PREMIERE would evoke the unique commercial
impression of a theatrical or dance performance to the
average purchaser of the goods.” Applicant’s brief at 7
(emphasis in the original). Applicant also argues, without
any supporting evidence, that “COLLECTION” is not merely
descriptive here because the term is used to describe
designers’ seasonal “collections” of clothing, and not
goods like dance apparel, “…where goods are more stable and
do not change with the seasons…” Id.
“Laudatory terms,” that is, terms which simply “puff”
the merits of the goods, are generally regarded as merely
descriptive. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (THE ULTIMATE BIKE
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RACK held laudatory and merely descriptive); In re The
Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed.
Cir. 1999) (THE BEST BEER IN AMERICA held laudatory and
merely descriptive).
We conclude that PREMIERE is merely descriptive of the
goods identified in the application. The Examining
Attorney provided a dictionary definition of “premiere”
from The American Heritage Dictionary of the English
Language (2000). At the outset we note that the definition
specifies the following: “ETYMOLOGY: French première from
feminine of premier, first.” Accordingly, we view
“premiere” and “premier” as equivalent, variant forms of
the same term for purposes of our analysis. In particular,
we conclude that either form would convey the same overall
meaning and impression when used in a mark, such as
PREMIERE COLLECTION. The definition specifies further
“ADJECTIVE: First or paramount, premier.”
This definition generally supports the Examining
Attorney’s position. We have consulted additional
dictionaries which provide a more expansive definition of
“premiere” or “premier” when used as an adjective, as it is
Ser No. 78463616
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in PREMIERE COLLECTION, to aid in our consideration of the
mark.2 We note the following definitions:
Webster’s Third New International Dictionary of the
English Language Unabridged (1986):
“pre-mier… adj. … 1: first in position, rank, or
importance: CHIEF, PRINCIPAL, LEADING
…”;
Random House Compact Unabridged Dictionary (special 2d
ed. 1987):
“pre-mier… adj. 3. first in rank; chief; leading.”;
and
The New Oxford American Dictionary (2d ed. 2005):
“pre-mier… adj. [attrib.] first in importance, order
or position; leading: Germany’s premier rock band|
the premier national publication…”
The Examining Attorney has also provided examples from
various web pages. For example, the fashionstore.com site
includes the following statement: ”The highly anticipated
premiere collection of JLo Clothes is now in retail stores
nationwide.” The alluringlooks.com site includes the
following statement: “The premiere collection consists of
vibrant colors, unusual prints, intricate patterns and a
variety of fabrics from light wool and French lace, to silk
charmeuse and chiffon.” The arabdesigns.com site includes
the following statement: “In Fall 2002, Lara Van Slyke
2 We take judicial notice of these dictionary definitions. See
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 78463616
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turned heads as creative passion transformed her design of
sensational shapes, spacious compartments and shimmering
interiors into a premiere collection of luxurious Italian
leather handbags.”
The evidence indicates the descriptive use of PREMIERE
in a laudatory sense as applied to goods generally,
including the goods identified in the application, to tout
goods as being the leading or best goods within a
particular category. Furthermore, the evidences indicates
the descriptive use of PREMIERE specifically in relation to
clothing and bags as denoting a new line.
We find applicant’s argument that relevant consumers
would perceive PREMIERE to suggest “the unique commercial
impression of a theatrical or dance performance”
unpersuasive. The goods include dance gear bags and a wide
range of clothing, well beyond clothing for use in a
theatrical or dance performance. For example, the goods
include clothing for use in cheering, aerobics and
liturgical activities, and individual items, such as, tee
shirts, shirts, belts, shawls, leg warmers, pullovers, warm
ups, sweaters, jumpers, jackets, and shorts. We conclude
that relelvant purchasers would not percieve a suggestion
of a theatrical or dance performance when viewing PREMIERE
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COLLECTION as applied to these goods, as identified in the
application.
Furthermore, we find applicant’s arguments with regard
to the significance of COLLECTION, as used in the mark,
unpersuasive. In addition to the evidence we have already
noted showing the use of the entire phrase PREMIERE
COLLECTION in relation to clothing and bags, the Examining
Attorney has also presented examples of numerous
registrations for marks which include COLLECTION for
clothing and other goods and services. These registrations
show that “COLLECTION” has been treated as a descriptive,
if not generic term. See, for example: Reg. No. 2716670
for the mark BIGIO COLLECTION on the Supplemental Register
for clothing; Reg. No. 2978058 for the mark COLLECTION and
Design on the Principal Register for clothing with
“COLLECTION” disclaimed; and Reg. No. 2929610 for the mark
BORICUA COLLECTION on the Principal Register for clothing
with “COLLECTION” disclaimed.
Contrary to applicant’s assertion, the evidence shows
that “collection” is not only used to designate a seasonal
line, but that “collection” is used generally to denote a
line or grouping of related clothing or other goods, and in
this case, a “COLLECTION” which is either the first or the
purported leading line or grouping.
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Furthermore, we conclude that there is nothing new and
unique in the combination of terms in this mark which would
render the combination anything more than the simple sum of
its parts. See In re Bright-Crest, Ltd., 204 USPQ at 593.
Finally, we note that applicant has requested that we
either reverse the refusal or that, “… the Board remand
this application with any suggested amendments to the goods
and/or disclaimers to the mark.” We deny applicant's
request for remand because it, in effect, seeks to
reopen the application and we have no authority to do so in
these circumstances. See Trademark Rule 2.142(g). During
examination of the application, applicant could have either
amended the identification of goods or proffered a
disclaimer, but applicant did not do so. Furthermore, in
view of our determination that the entire mark is merely
descriptive, a disclaimer of one of the terms in the mark
would not alter that determination.
In conclusion, we find that PREMIERE COLLECTION is
merely descriptive of bags, namely dance gear bags, in
International Class 18, and women's and girl's dance,
figure skating, gymnastic, cheering and aerobics apparel
and accessories, namely, tights, body suits, leggings, tee
shirts, shirts, belts, shawls, shoulder wraps, leg warmers,
and liturgical dance clothing, namely leotards, pullovers,
Ser No. 78463616
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skirts, hooded head wraps, blouses, pants, dresses, briefs,
unitards, sashes, apron tops and capes, and women's and
girl's dance, figure skating, gymnastic, cheering and
aerobics apparel and accessories, namely, warm ups,
leotards, skirts, wraps, pullovers, cover-ups, sweaters,
jumpers, jackets, pants, and shorts, in International Class
25.
Decision: The refusal to register the mark under
Section 2(e)(1) of the Trademark Act is affirmed.
