B. Gould Jewelry, Inc.

Trademark Trial and Appeal Board

Dec 22, 2008

No. 78836910 (T.T.A.B. Dec. 22, 2008)

Mailed:
December 22, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re B. Gould Jewelry, Inc.
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Serial No. 78836910
_______

B. Craig Killough of Barnwell Whaley Patterson & Helms LLC
for B. Gould Jewelry, Inc.

Michael A. Wiener, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney)
_______

Before Hairston, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

B. Gould Jewelry, Inc. (applicant) has applied to
register the mark CHARLESTON GATE in standard characters on
the Principal Register for goods now identified as
“jewelry, namely, earrings, necklaces, pins, slides, rings,
bracelets, pendants, charms, key rings” in International
Class 14.1 The Examining Attorney has finally refused

1 Serial No. 78836910, filed March 14, 2006, claiming first use
of the mark anywhere and first use of the mark in commerce on
April 26, 2004.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78836910
2
registration on the ground that CHARLESTON GATE merely
describes the identified goods under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1). Both 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 MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778 (Fed. Cir. 2003) (MONTANA SERIES and
PHILADELPHIA CARD held merely descriptive of credit card
services featuring credit cards depicting scenes or subject
matter of, or relating to the state of Montana or the city
of Philadelphia); In re Busch Entertainment Corp., 60
USPQ2d 1130 (TTAB 2000) (EGYPT held merely descriptive of
amusement park services; namely an area within an amusement
park). See generally In re H.U.D.D.L.E., 216 USPQ 358, 359
Ser No. 78836910
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(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 or services
identified in the application, and the possible
significance that the term would have to the average
purchaser or user of the goods or services. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The question whether a mark is merely descriptive is not
determined by asking whether one can guess from the mark
what the goods are, but rather by asking, when the mark is
seen on or in connection with the goods, whether it
immediately conveys information about their nature. See In
re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
The Examining Attorney argues that CHARLESTON GATE is
merely descriptive of “jewelry, namely, earrings,
necklaces, pins, slides, rings, bracelets, pendants,
charms, key rings” because the goods “… contain the designs
of the famous gates of Charleston, South Carolina, or
replications thereof.” Examining Attorney’s Brief at 4.
The Examining Attorney states further, “The city of
Charleston, South Carolina, is famous for the design of the
Ser No. 78836910
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large hand-crafted gates built over centuries that dot the
city. The term ‘CHARLESTON GATE’ refers to those gates and
the renowned designs of those gates.” Id.
The Examining Attorney has provided substantial
evidence to support this position.
For example, an excerpt from virtualtourist.com
states, “Charleston Gate Jewelry is fantastic!! Although a
touch on the pricey side, these items are crafted to
resemble various gates and ironwork across the city…”
Attachment to February 27, 2008 Office Action.
Another excerpt from g2silver.com, a site featuring
applicant’s goods, states, “The ornamental iron works found
throughout Charleston remind us that much of Charleston’s
history began with influences from England and France.
These delicate patterns of iron work gates have been the
inspiration for the jewelry designs you will find here.”
Attachment to Office Action of May 3, 2007. The site also
displays photos of particular iron work gates in Charleston
alongside pieces of jewelry based on designs from the
gates, for example, the gate at St. Michael’s Episcopal
Church and related rings, pendants and other jewelry.
There are similar examples from South Carolina Society Hall
and First Scots Presbyterian Church. The pages where these
Ser No. 78836910
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displays appear also refer to new product offerings
stating, “New Gate Designs Now Available.” Id.
Excerpts from philipsimmons.org, a site with no
apparent connection to applicant, also displays jewelry
based on designs of the iron gates of Charleston. For
examlple, a brooch and an earring set are displayed with
the explanation, “This Walkway gate is the entrance of
Philip Simmons Garden from 91 Anson Street, Charleston SC.
Simmons designed this gate in 1992.” Id. The excerpt
indicates further that Philip Simmons was a renown
Charleston ironworker, born in 1912. This is an example of
a continuing tradition in the creation of iron work gates
in recent times and the creation of jewelry based on the
gate design.
An excerpt from croghansjewelbox.com associated with
Croghan’s Jewel Box, a jewelry store in Charleston,
includes a photo of various pieces of jewelry with the
following statement: “Remember your wedding in Charleston
with gate jewelry as your bridesmaid gift. Gate designs
from historic churches and homes are reproduced in this
jewelry…” Id.
Excerpts from bcdservices.com also show jewelry items
based on Charleston gate designs, for example, the First
Scots Cuff Bracelet, Society Hall Cuff Bracelet, Society
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Hall Post Earrings, and others. Id. It is unclear whether
these goods are associated with applicant.
Applicant begins its argument by stating: “The
applicant created novel and unique jewelry designs that are
interpretations of wrought iron structures located in
Charleston South Carolina.” Applicant’s Brief at 4
(footnote omitted). Applicant then argues, “It (sic)
respectfully submitted that creative adaptations of obscure
wrought iron structures into jewelry does not cause the
Applicant’s Mark to be rendered merely descriptive of
Applicant’s goods.” Id. To support its argument applicant
provides a dictionary definition of “gate” and, based on
that definition, argues:
None of these definitions, identify, teach or
disclose a feature or characteristic of
Applicant’s goods. The goods are not a gate; the
goods do not comprise a gate; no part of the
goods is a gate; the goods do not, and could not
function as, or be used as, a gate. The jewelry
has no feature or characteristic associated with
gates that are in common use. The ornamental
appearance of applicant’s goods is not a feature
or characteristic of a “gate” as that term is
known and understood by the typical consumer.

Id. at 5-6.
Based on all of the evidence of record, we conclude
that CHARLESTON GATE is merely descriptive of “jewelry,
namely, earrings, necklaces, pins, slides, rings,
bracelets, pendants, charms, key rings.”
Ser No. 78836910
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In the MBNA case, one similar to this case, the Court
of Appeals for the Federal Circuit analyzed the issue, as
follows:
The words MONTANA SERIES and PHILADELPHIA CARD
are displayed prominently on MBNA's promotional
materials. The appeal to regional pride and
loyalties is a significant feature of MBNA's
method of promoting and marketing these affinity
credit cards as well as of the services
themselves. Thus, to the consumers, MONTANA
SERIES and PHILADELPHIA CARD immediately convey
information about the specific regional affinity,
or the user group to which these services are
directed. One does not need “imagination,
thought, and perception” to arrive at the
conclusion that MONTANA SERIES is a series of
cards featuring Montana and appealing to those
who would like to have credit cards naming their
favored state and depicting Montana scenes, and
that PHILADELPHIA CARD features scenes of
Philadelphia on the cards and appeals to those
favoring Philadelphia and wishing to be
identified with it. Thus, the two marks clearly
are not suggestive. Neither are the marks
arbitrary when used for the affinity credit card
services because the marks describe which
geographic region the affinity card concerns.

In re MBNA America Bank N.A., 67 USPQ2d at 1781.

In this case, the relationship between the mark and
goods is more direct than the relationship in the MBNA
case. Jewelry is an aesthetically pleasing item of
personal adornment. Thus, the design is essential to the
function, that is, the aesthetic appeal, of the goods.
The evidence establishes that CHARLESTON GATE
identifies the designs applicant employs in its jewelry.
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The evidence also establishes that relevant consumers will
recognize CHARLESTON GATE as identifying those designs.
Indeed, applicant’s own marketing is based on this
assumption. The evidence belies applicant’s claim that
these designs are obscure and unknown to potential
purchasers. In this regard, it is applicant’s own use of
CHARLESTON GATE which is most probative of the descriptive
significance of the mark in relation to the goods. See In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987).
Applicant consistently avoids mention of “gate”
designs in its argument, preferring to use terms such as
“wrought iron structures.” However, the evidence shows
that many, if not most, of applicant’s goods derive their
designs from gates, rather than other types of iron works.
Also, applicant’s argument based on the definition of
“gate” misses the point. The Examining Attorney has not
argued that the goods are gates or function as gates.
Rather, when we view the CHARLESTON GATE mark as a whole
and as applied to the goods, which we must, it is clear
that the mark merely describes the designs which are the
essential feature of the goods, jewelry. In re Polo
International Inc., 51 USPQ2d at 1062.
Ser No. 78836910
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For completeness we note that we have considered the
letters which applicant submitted in support of
registration, that is, an exchange of letters between
applicant and an alleged infringer and a letter from the
Historic Charleston Foundation indicating that it executed
an agreement with applicant and that it considers
CHARLESTON GATE distinctive of applicant’s jewelry.
The exchange of letters with the alleged infringer is
not probative of the issue before us. The fact that a
third party may have acquiesced to applicant’s demand to
cease using CHARLESTON GATE has no bearing on our
determination that CHARLESTON GATE is merely descriptive.
The fact that another party was using CHARLESTON GATE to
identify its goods may even be construed as support for our
determination that CHARLESTON GATE is merely descriptive,
though we have not relied on the letters for this purpose.
As to the Foundation letter, we likewise find it not
probative. Applicant’s position in this application is
that CHARLESTON GATE is inherently distinctive. The letter
is ambiguous on this point. That is, it merely expresses
an opinion that CHARLESTON GATE is “distinctive of their
[applicant’s] jewelry” without specifying whether it is
inherently so or whether it acquired distinctiveness. It
is entirely understandable that the Foundation may not
Ser No. 78836910
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appreciate the significance of this legal distinction, a
distinction we must recognize in considering this evidence.
In any event, we find this evidence unpersuasive when
considered along with the other evidence in this case.
Accordingly, we conclude that CHARLESTON GATE is
merely descriptive of “jewelry, namely, earrings,
necklaces, pins, slides, rings, bracelets, pendants,
charms, key rings.”
Decision: We affirm the refusal under Trademark Act
Section 2(e)(1).