Bradley J. Holmes

Trademark Trial and Appeal Board

Feb 9, 2004

No. 76329452 (T.T.A.B. Feb. 9, 2004)

Mailed:
February 9, 2004
Paper No. 11
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bradley J. Holmes
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Serial No. 76329452
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David A. Lowe of Black Lowe & Graham PLLC for Bradley J.
Holmes.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Bradley J. Holmes seeks registration on the Principal
Register for the mark INFIDELITYKIT for “forensic test kits
for home use consisting primarily of diagnostic reagents for
detecting the presence of semen on any material,” in
International Class 1.1
This case is now before the Board on appeal from the
final refusal to register on the ground that the alleged
mark is merely descriptive of applicant’s goods under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1).
1 Application Serial No. 76329452 was filed on October 24, 2001
based upon applicant’s allegations of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76329452
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Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
We affirm the refusal to register.2
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, if it immediately conveys information
of significant features, functions or uses of the goods with
which it is intended to be used. A mark is suggestive, and
therefore registrable on the Principal Register without a
showing of acquired distinctiveness, if imagination, thought
or perception is required to reach a conclusion on the
nature of the goods or services. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the mark in relation to the goods
for which registration is sought, the context in which the
mark is used or is intended to be used, and the possible
significance that the mark is likely to have on the average
purchaser encountering the goods in the marketplace. See In
2 In a decision issued on December 11, 2003, the Board had
earlier held the mark 5 MINUTE INFIDELITY TEST KIT to be merely
descriptive of the same goods in an application based upon
applicant’s allegation of use in commerce.
Serial No. 76329452
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re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978).
The Trademark Examining Attorney takes the position
that applicant’s proposed mark “immediately and
unequivocally provides information about the nature of the
goods – clearly indicating that the goods are a kit for
detecting infidelity.” (Trademark Examining Attorney’s
appeal brief, unnumbered page 4) In support of his position
that this proposed mark is merely descriptive, the Examining
Attorney placed into the record a dictionary definition of
the word “infidelity” as meaning “unfaithfulness to a sexual
partner, especially a spouse” or “an act of sexual
unfaithfulness.” He argues from the plain meaning of the
word “infidelity” that “the proposed mark clearly indicates
that the goods are intended to prove infidelity.” (Office
action of January 16, 2002, unnumbered page 2)
In response, applicant argues that his trademark is not
merely descriptive, while conceding that it may well be
suggestive. As noted above, a mark is suggestive if
imagination, thought or perception is required to reach a
conclusion on the purpose or features of the goods. See In
re Gyulay, supra. Accordingly, applicant argues that
potential consumers would have to use some imagination or
thought in order to understand the purpose or features of
Serial No. 76329452
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the goods being offered by applicant in connection with this
alleged mark:
It requires a great deal of imagination,
thought, or perception to discern from
Applicant’s INFIDELITYKIT that it is a
“forensic test kit[] for home use consisting
of [sic] primarily of diagnostic reagents for
detecting the presence of semen on material.”
Nothing in the term INFIDELITY takes the
public immediately to the notion of semen
detection for the purpose of finding
infidelity.
(Applicant’s reply brief, p. 4).
As to whether the alleged mark herein immediately
conveys information about the purpose for the goods,
applicant focuses primarily on the word “infidelity.”
Applicant then argues that the dictionary definition relied
on by the Trademark Examining Attorney does not support the
Trademark Examining Attorney’s position. Based upon that
definition, applicant argues that the word “infidelity” in
applicant’s mark may well conjure up images of sexual
unfaithfulness, but that the term “does not in any clear or
precise way … immediately describe forensic semen
detection,” and hence is not merely descriptive.
In support of his position that this phrase is
suggestive, applicant argues that the fact that there is no
dictionary entry for the phrase “infidelity kit” should
weigh in applicant’s favor. In re Sundown Tech. Inc., 1
USPQ2d 1927, 1928 (TTAB 1986) [GOVERNOR is nebulous as
Serial No. 76329452
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applied to amplifier controls, and the dictionary definition
does not list GOVERNOR as a term of art in the electronics
field]; In re Men’s Int’l Professional Tennis Council, 1
USPQ2d 1917, 1918 (TTAB 1986) [In application to register
MASTERS as a service mark for “organizing and conducting an
annual tennis tournament,” Board found that “the absence of
any particular reference to tennis in the dictionary [entry
for the word “master”] probably favors appellant’s position
that the mark should be published rather than that it should
be refused ex parte.”].
However, it is well settled that in order to make a
prima facie case of descriptiveness, the Trademark Examining
Attorney may rely upon dictionary definitions of individual
elements in a combined term, as the Trademark Examining
Attorney has done in the instant case. See In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987)
[SCREENWIPE for a premoistened, antistatic cloth for
cleaning computer and television screens]. If each
component retains its descriptive significance in relation
to the goods, the combination results in a composite that is
itself descriptive. See In re Putman Publishing Co., 39
USPQ2d 2021 (TTAB 1996) [FOOD & BEVERAGE ONLINE held to be
merely descriptive of news and information service for the
food processing industry]; In re Copytele Inc., 31 USPQ2d
Serial No. 76329452
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1540 (TTAB 1994) [SCREEN FAX PHONE merely descriptive of
“facsimile terminals employing electrophoretic displays”];
In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986)
[SQUEEZE N SERV held to be merely descriptive of ketchup and
thus subject to disclaimer]; In re Uniroyal, Inc., 215 USPQ
716 (TTAB 1982) [STEELGLAS BELTED RADIAL held merely
descriptive of vehicle tires containing steel and glass
belts].
In support of his position that this alleged mark is
suggestive, applicant argues that “[i]t requires speculation
and luck – much more even than a great deal of imagination,
thought or perception – to discern from Applicant’s mark the
precise description of the nature of Applicant’s goods.”
(Applicant’s appeal brief, p. 5) However, the cases cited
by applicant at this point in his brief3 are not that helpful
to applicant’s position as these marks were found to be
registrable because the combination of merely descriptive
components created a unitary mark having a unique,
nondescriptive meaning as applied to those goods. Here,
applicant has not demonstrated what new, nondescriptive
connotation the combined term creates when applied to the
identified goods.
3 See e.g., In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ
382 (C.C.P.A. 1968) [SUGAR & SPICE held not merely descriptive of
bakery products] and In re Shutts, 217 USPQ 363 (TTAB 1983) [SNO-
RAKE held not merely descriptive of a snow removal hand tool].
Serial No. 76329452
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Applicant expressly agrees that the question of whether
a particular term is descriptive or suggestive must not be
determined “in the abstract.” Yet applicant goes on to
argue that the mark is not merely descriptive because one
cannot tell from the mark alone that the product involves
forensic semen detection:
… [E]ven if one makes the mental leap to
associate the INFIDELITYKIT mark with a test
kit for proving, predicting or detecting
sexual unfaithfulness, the mark could
describe a wide variety of types of kits,
limited only by the imagination of the person
hearing or seeing the mark.
(Applicant’s reply brief, p. 4) The standard derived from
Lanham Act precedential decisions does not require, for a
descriptiveness refusal, that it is possible for a
blindfolded consumer who has been given only the proposed
mark to enumerate the exact features, technologies or
methodologies employed in the goods. Rather, the question
is whether someone who knows what the goods are will
understand the term or phrase to convey significant
information about them – namely, the idea that these kits
are designed to provide a means to test for evidence of the
sexual infidelity of one’s partner. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
Serial No. 76329452
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We agree with the Trademark Examining Attorney that the
question to ask is whether the term “infidelity kit”
immediately conveys information about the purpose of a home
test kit designed to uncover evidence of the sexual
activities of one’s partner. Applying the general standard
enunciated above to the facts of this case, it is not a
requirement of the case law that the prospective customer
for these goods (e.g., the suspicious partner) knows
immediately upon seeing or hearing the alleged mark that the
methodology involves semen detection. Rather, it is
sufficient that a consumer in the market for a forensic test
kit for detecting semen, when confronted with such a kit
marketed under the designation “INFIDELITYKIT,” would know
immediately the purpose for this kit.
Decision: The refusal to register under Section
2(e)(1) of the Act is hereby affirmed.