Branded LLC

Trademark Trial and Appeal Board

Aug 7, 2020

87214622 (T.T.A.B. Aug. 7, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: July 29, 2020 Mailed: August 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Branded LLC
_____

Serial No. 87214622
Serial No. 87214637
(Consolidated)
_____

Jeffrey M. Furr of Furr Law Firm for Branded LLC.

Brian P. Callaghan, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Kuhlke, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Branded LLC (“Applicant”) seeks registration on the Principal Register of the
proposed standard character mark TWEEDS for “shoes; belts; swimwear,” in
International Class 25,1 and for “Bed sheets, pillow cases, comforters, bedspreads,
pillow shams, bed ruffles, duvet covers, comforter covers, mattress pads, bed

1 Application Serial No. 87214622 was filed on October 25, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant allegation of a bona fide intention to
use the proposed mark in commerce.
Serial Nos. 87214622 and 87214637 (Consolidated)
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blankets, towels, wash cloths, fabric shower curtains, draperies and fabric valances,”
in International Class 24.2
The Trademark Examining Attorney refused registration of Applicant’s proposed
mark in both applications under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that it is merely descriptive of one or more of the goods
identified in each application, and has not acquired distinctiveness under Section 2(f)
of the Trademark Act, 15 U.S.C. § 1052(f). When the refusals were made final,
Applicant appealed and requested reconsideration, which was denied.
The Board subsequently suspended both appeals pending the outcome of
Applicant’s appeal to the United States Court of Appeals for the Federal Circuit of
the Board’s final decision in Applicant’s appeal in Serial No. 86529647, in which the
Board affirmed a refusal to register TWEEDS on the Supplemental Register for shirts
and sweaters on the ground that the proposed mark was generic for the goods. 9-10
TTABVUE (Serial No. 87214622); 10 TTABVUE (Serial No. 87214637).3 When the
Board’s decision in Serial No. 86529647 was affirmed by the Federal Circuit, In re
Branded LLC, Case No. 18-1828 (Fed. Cir. Apr. 8, 2019), and the United States
Supreme Court denied a petition for a writ of certiorari, Branded LLC v. Iancu, ___

2 Application Serial No. 87214637 was filed on October 25, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the proposed mark in commerce.
3 Citations in this opinion to the briefs and other materials in the files of both appeals refer
to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d
1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to
the docket entry number, and any numbers following TTABVUE refer to the page number(s)
of the docket entry where the cited materials appear.
Serial Nos. 87214622 and 87214637 (Consolidated)
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U.S. ____, Case No. 19-53 (2019), both appeals were resumed. 11 TTABVUE (Serial
Nos. 87214622 and 87214637).
Applicant and the Examining Attorney have filed briefs in both appeals,4 and
counsel for Applicant and the Examining Attorney appeared at a video hearing before
the panel. We affirm the refusals to register.
I. Record on Appeal5
The record on appeal includes dictionary definitions of the words “tweed” and
“tweeds,”6 and Internet webpages displaying the following goods described as being
made of “tweed”: shoes, belts, and swimsuits, in Serial No. 87214622,7 and pillow
cases, duvet covers, draperies, fabric valances, bed sheets, and bedspreads, in Serial
No. 87214637.8
Applicant referred in its appeal brief in Serial No. 87214622 to its Registration
Nos. 1697698 and 4861285 for TWEEDS, 7 TTABVUE 6, and also attached to that
brief pages from the TTABVUE system containing the docket entries for Opposition
Nos. 91224843 and 91220719, in which Applicant opposed two applications to register

4 Applicant filed different briefs in each appeal, while the Examining Attorney filed the same
brief in both appeals, in which he addressed both refusals.
5 Citations in this opinion to the application records, including the requests for
reconsideration and their denials, are to pages in the Trademark Status & Document
Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”).
6 February 6, 2017 Office Actions at TSDR 2-11; August 26, 2017 Office Actions at TSDR 2-
13.
7 February 6, 2017 Office Action at TSDR 12-17; August 26, 2017 Office Action at TSDR 14-
22, 31-34.
8 February 6, 2017 Office Action at TSDR 12-16; August 26, 2017 Office Action at TSDR 14-
23.
Serial Nos. 87214622 and 87214637 (Consolidated)
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the mark TWEEDS BE WELL-WOVEN. Id. at 8-13. The record in an application
should be complete prior to the filing of an appeal, Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d), and these materials were not made of record during prosecution.
Evidence submitted or referred to for the first time on appeal is generally disregarded
as untimely, see TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) Section 1207.01 (June 2020) and cases cited therein, but only because the
Examining Attorney addressed both registrations during prosecution, and discussed
both registrations and the oppositions in his brief, 13 TTABVUE 9, 11-14, and at the
oral hearing, we will consider the registrations and the materials attached to
Applicant’s brief in Serial No. 87214622 for whatever probative value they may have.
TBMP Sections 1207.03, 1208.02.
II. Mere Descriptiveness Refusal
A. Applicable Law
1. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits registration
on the Principal Register of “a mark which, (1) when used on or in connection with
the goods of the applicant is merely descriptive . . . of them,” unless the mark has
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). “A mark is
‘merely descriptive’ within the meaning of Section 2(e)(1) ‘if it immediately conveys
information concerning a feature, quality, or characteristic of the goods or services
for which registration is sought.’” In re Omniome, Inc., 2020 USPQ2d 3222, *3 (TTAB
2020) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir.
Serial Nos. 87214622 and 87214637 (Consolidated)
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2017)). “A mark need not recite each feature of the relevant goods or services in detail
to be descriptive, it need only describe a single feature or attribute.” Id. (quoting In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012)). “Moreover, a mark need not be merely descriptive of all recited goods or
services in an application. A descriptiveness refusal is proper if the mark is
descriptive of any of the [goods] for which registration is sought.” Chamber of
Commerce, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Whether a mark is merely descriptive is “evaluated ‘in relation to the particular
goods for which registration is sought, the context in which it is being used, and the
possible significance that the term would have to the average purchaser of the goods
because of the manner of its use or intended use ,’” id. (quoting In re Bayer AG, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)), and “not in the abstract or on the
basis of guesswork.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB
2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)) .
We ask “whether someone who knows what the goods and services are will
understand the mark to convey information about them.” Real Foods Pty Ltd. v. Frito-
Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018) (quoting
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (internal quotation omitted)). A mark is suggestive rather
than merely descriptive if it requires imagination, thought, and perception on the
Serial Nos. 87214622 and 87214637 (Consolidated)
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part of someone who knows what the goods are to reach a conclusion about their
nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515.
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers[,] and other publications.” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
goods.’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200 USPQ at 218).
“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services.” Fat Boys, 118 USPQ2d at 1513 (citing
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)). “If such a
showing is made, the burden of rebuttal shifts to the applicant.” Id. (citing In re Pacer
Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003)).
2. Acquired Distinctiveness
Section 2(f) of the Trademark Act provides that a proposed mark found to be
merely descriptive under Section 2(e)(1) may nevertheless be registered on the
Principal Register if “it has become distinctive of the applicant’s goods in commerce.”
15 U.S.C. § 1052(f).9 See generally In re Guaranteed Rate, Inc., 2020 USPQ2d 10869,

9 A proposed mark that has been found to be merely descriptive and lacking acquired
distinctiveness may be registered on the Supplemental Register, which is a register for terms
that are capable of functioning as marks, but do not do so at the time of registration . See
generally In re Medline Indus., Inc., 2020 USPQ2d 10237, *1-2 & n.11 (TTAB 2020). In its
brief in Serial No. 87214637, Applicant requests “in the alternative” that if TWEEDS is found
to be merely descriptive and without acquired distinctiveness, it “be approved to be moved to
Serial Nos. 87214622 and 87214637 (Consolidated)
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*2-3 (TTAB 2020). “To establish that a term has acquired distinctiveness, ‘an
applicant must show that in the minds of the public, the primary significance of a
product feature or term is to identify the source of the product rather than the product
itself.’” Id. at *2 (quoting In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d
1262, 1265 (Fed. Cir. 2015)).
The involved applications are intent-to-use applications, and a “claim of
distinctiveness under Section 2(f) normally is not raised in a Section 1(b) application
before the applicant files an amendment to allege use or a statement of use because
a claim of acquired distinctiveness, by definition, requires prior use .” In re Olin Corp.,
124 USPQ2d 1327, 1333 (TTAB 2017) (citing In re Binion, 93 USPQ2d 1531, 1538
(TTAB 2009)). Nevertheless, an applicant can establish a prima facie case of acquired
distinctiveness “in the mark in an intent-to-use application where it can show that
same mark acquired distinctiveness for sufficiently similar or related goods, and that
this acquired distinctiveness will transfer to the goods specified in the application

the Supplemental Register.” 8 TTABVUE 6. This request cannot be granted for two reasons.
First, to be eligible for registration on the Supplemental Register, a proposed mark “must be
in lawful use in commerce by the owner thereof.” 15 U.S.C. § 1091(a). During prosecution,
the Examining Attorney advised Applicant of the possibility of amendment to seek
registration on the Supplemental Register, October 6, 2017 Office Action at TSDR 1 (citing
15 U.S.C. § 1091 and Trademark Rules 2.47 and 2.75(a), 37 C.F.R. §§ 2.47, 2.75(a)), but
Applicant never amended its intent-to-use application to allege use of the proposed mark in
commerce. Second, Applicant never addressed amendment to the Supplemental Register
during prosecution, and its current “request to seek registration on the Supplemental
Register is untimely,” In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, *17 (TTAB 2019),
because “[h]ad Applicant wished to argue registrability on the Supplemental Register, it
should have raised that issue prior to appeal, or sought a remand for good cause prior to final
decision.” Id. (citing In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016)
(rejecting an applicant’s remand request on appeal to amend to the Supplemental Register
as an untimely request that should have been made during prosecution)).
Serial Nos. 87214622 and 87214637 (Consolidated)
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when the mark is used in connection with them.” Id. (citing In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re
Highlights for Children, Inc., 118 USPQ2d 1268, 1273-74 (TTAB 2016); In re Nielsen
Bus. Media Inc., 93 USPQ2d 1545, 1547 (TTAB 2010)).
As explained in the [Trademark Manual of Examining
Procedure (“TMEP”)], and just as with a use-based
application, there are three methods for . . . establishing
that a mark has acquired distinctiveness for goods
sufficiently similar or related to those identified in the
intent-to-use application. Trademark Rule 2.41(a), 37
C.F.R. 2.41(a), provides distinctiveness may be proven
under Section 2(f) by the following means:
(1) Ownership of prior registration(s). In appropriate cases,
ownership of one or more active prior registrations on the
Principal Register or under the Trademark Act of 1905 of
the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently
similar to the goods or services in the application; however,
further evidence may be required.
(2) Five years substantially exclusive and continuous use
in commerce. In appropriate cases, if a trademark or
service mark is said to have become distinctive of the
applicant’s goods or services by reason of the applicant ’s
substantially exclusive and continuous use of the mark in
commerce for the five years before the date on which the
claim of distinctiveness is made, a showing by way of
verified statements in the application may be accepted as
prima facie evidence of distinctiveness; however, further
evidence may be required.
(3) Other evidence. In appropriate cases, where the
applicant claims that a mark has become distinctive in
commerce of the applicant’s goods or services, the applicant
may, in support of registrability, submit with the
application, or in response to a request for evidence or to a
refusal to register, verified statements, depositions, or
other appropriate evidence showing duration, extent, and
nature of the use in commerce and advertising
expenditures in connection therewith (identifying types of
Serial Nos. 87214622 and 87214637 (Consolidated)
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media and attaching typical advertisements), and verified
statements, letters or statements from the trade or public,
or both, or other appropriate evidence of distinctiveness.
Id. at 1334. In Olin, the Board “emphasize[d] that, by the very nature of the inquiry,
Section 1(b) applicants face a heavy burden in establishing that their mark will
acquire distinctiveness when use commences,” such that “the required showing for
acquired distinctiveness to ‘transfer’ to new products is a rigorous one.” Id. at 1335.
B. Summary of Arguments
1. Applicant
In Serial No. 87214622, Applicant devotes much of its arguments to the issue of
genericness, which was not the Examining Attorney’s basis for refusal of registration,
and is thus not before us on appeal. Applicant discusses the definition of a generic
name and the Federal Circuit’s test for genericness, 7 TTABVUE 3-5, and argues that
the Examining Attorney has not carried his burden of “establishing by ‘clear
evidence’” that TWEEDS is generic for shoes, belts, or swimwear, id. at 4-6, because
“TWEEDS” is not a generic or descriptive name as it is not
the term by which shoes; belts; or swimwear are commonly
known, nor does it depict the product or service as a whole.
The examples given by the examining attorney use the
word “tweed” to indicate the type of shoes; belts; or
swimwear being offered. This is because the wording
“tweeds” is not generic or descriptive in association with
shoes; belts; or swimwear. This “evidence” does not show
that “tweeds” is generic or descriptive in association with
shoes; belts; or swimwear, but rather that it describes a
particular type of fabric. A fabric that is not commonly used
in association with shoes; belts; or swimwear. While it is
possible to find shoes; belts; or swimwear that are made of
tweed, it is not common and the relevant public would not
find the term “TWEEDS” to refer to shoes; belts; or
swimwear. Tweed is a fabric, not a generic term for shoes;
belts; or swimwear so the mark is not generic.
Serial Nos. 87214622 and 87214637 (Consolidated)
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Id. at 5. Applicant only briefly mentions the Federal Circuit’s test for descriptiveness
discussed above, id. at 3-4, and does not argue that its mark is not descriptive under
that test.
Applicant also argues that the proposed mark
was previously registered, and owned by applicant, in
association with highly similar goods in US Registration
Number 1697698. The mark was not previously
determined to be generic or descriptive. The applicant owns
for TWEEDS (U.S. Registration No. 4861285) for goods
similar to those set forth in the instant application, where
TWEEDS was not found to be generic. In refusing
registration of this application based on highly
descriptiveness [sic], the Examining Attorney is running
counter to the previous correct findings of the USPTO. The
Examining Attorney has not shown or proved any changes
to the marketplace or commerce which would covert
“TWEEDS” from a mark that was placed and registered on
the principal register to a mark that is generic or highly
descriptive.”
Id. at 6.
Finally, Applicant argues that its proposed mark has acquired distinctiveness
because
Application [sic] has been using the TWEEDS mark on
similar goods being offered in commerce since 1987 and
continues to be used today. The mark has become
distinctive with goods being sold by the Applicant and is
recognized by consumers as an indicator of source for the
goods. This brand is a long standing brand and is
recognized by the relevant public as such. The Applicant
has defended the use of the “TWEEDS” mark against
potential infringers and it has never claimed to be or found
to be generic or descriptive in these enforcements actions.
(Oppositions Number 91224843 and 91220719, Exhibit A
and B).
Id. at 6-7.
Serial Nos. 87214622 and 87214637 (Consolidated)
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In Serial No. 87214637, Applicant argues that
“‘TWEEDS’ is not a descriptive name as it is not the term
by which Bed sheets, pillow cases, comforters, bedspreads,
pillow shams, bed ruffles, duvet covers, comforter covers,
mattress pads, bed blankets, towels, wash cloths, fabric
shower curtains, draperies and fabric valances are
commonly known, nor does it depict the product or service
as a whole. It is a suggestive mark so it should be approved
to the Principal Register[.]”
8 TTABVUE 4. Applicant argues that “[t]weed is a fabric, not Bed sheets, pillow cases,
comforters, bedspreads, pillow shams, bed ruffles, duvet covers, comforter covers,
mattress pads, bed blankets, towels, wash cloths, fabric shower curtains, draperies
or fabric valances,” id., and that “the goods associated with this mark ‘Bed sheets,
pillow cases, comforters, bedspreads, pillow shams, bed ruffles, duvet covers,
comforter covers, mattress pads, bed blankets, towels, wash cloths, fabric shower
curtains, draperies and fabric valances’” are not commonly known to be made from
tweed material.” Id. at 5.
Applicant reprises its arguments made in Serial No. 87214622 that it “has been
offering related goods in commerce with this mark since 1987,” and that the mark
“has become distinctive with these types of goods and is recognized by consumers as
an indicator of source for the goods.” Id. at 3. Applicant further claims that it “has
defended the use of the ‘TWEEDS’ mark against potential infringers and it has never
claimed to be or found to be descriptive in these enforcement actions, and that “[o]ne
of these marks was previously registered, and owned by applicant, in association with
the goods in US Registration Number 1697698,” and “was not previously determined
to be descriptive.” Id.
Serial Nos. 87214622 and 87214637 (Consolidated)
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2. The Examining Attorney
The Examining Attorney’s arguments in both appeals are based on dictionary
definitions of “tweed” as “‘a rough woolen fabric made usually in twill weaves and
used especially for suits and coats,’” and its plural “tweeds” as “‘tweed clothing;
specifically: a tweed suit.’” 13 TTABVUE 7.10 The Examining Attorney argues that
TWEEDS is merely descriptive because “Applicant’s goods in International Classes
24 and 25 feature goods that are broad enough to be made in whole or in part from
tweed,” id. at 7-8, and that the proposed mark is “highly descriptive of a central
feature or ingredient (material) used to make the applied-for goods.” Id. at 14.
The Examining Attorney made of record webpages showing tweed fabric versions
of a number of the identified goods in Class 24 and tweed fabric versions of each of
the identified goods in Class 24. These examples are representative:
11

10 February 6, 2017 Office Actions at TSDR 2 (MERRIAM-WEBSTER DICTIONARY).
11 February 6, 2017 Office Action (Serial No. 87214622) at TSDR 13.
Serial Nos. 87214622 and 87214637 (Consolidated)
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12
13
14

12 Id. at TSDR 15. All highlighting on webpages in the record was supplied by the Examining
Attorney.
13 Id. at TSDR 17.
14 February 6, 2017 Office Action (Serial No. 87214637) at TSDR 12.
Serial Nos. 87214622 and 87214637 (Consolidated)
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15
16

The Examining Attorney also addresses each of Applicant’s various arguments.
“[W]ith respect to Applicant’s argument that ‘TWEEDS’ is not a descriptive name as
(1) it is not the term by which any of the applied-for goods in International Class 24

15 Id. at TSDR 16.
16 August 26, 2017 Office Action at TSDR 18.
Serial Nos. 87214622 and 87214637 (Consolidated)
- 15 -

(Application Serial No. 87214637) are commonly known, and (2) it does not depict the
product as a whole,” the Examining Attorney argues that “the applied-for mark need
not denote the apt name of the goods or describe the product as a whole, in order to
be deemed merely descriptive. Rather, a term that describes an ingredient or material
of the goods, such as tweed fabric in the instant case, is merely descriptive.” 13
TTABVUE 9-10. In response to Applicant’s similar argument regarding its Class 25
goods, the Examining Attorney argues that the record “shows that clothing items and
accessories such as Applicant’s goods listed as ‘shoes; belts; swimwear’ are often made
in whole or in part from tweed fabric, such that this wording merely describes or
denotes a feature or ingredient (material) used to make the applied-for goods.” Id. at
10.
The Examining Attorney rejects Applicant’s arguments based on its claimed
ownership of cancelled Registration No. 1697698 because it “is of no probative value
as to the instant determination of descriptiveness” because “trademark rights are not
static, and eligibility for registration must be determined on the basis of the facts and
evidence in the record at the time registration is sought, which includes during
examination and any related appeal,” and the “USPTO is not bound by the decisions
of the examiners who examined the applications for the applicant’s previously
registered marks, based on different records.” Id. at 11. The Examining Attorney
rejects Applicant’s reliance on its ownership of Registration No. 4861285 for
“Bracelets; Earrings; Necklaces; Rings” in International Class 14 and for “Purses and
wallets” in International Class 18, because the mark “is registered on the
Serial Nos. 87214622 and 87214637 (Consolidated)
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Supplemental Register, which is a concession that said mark TWEEDS is not an
inherently distinctive source-indicator.” Id. at 12.
Finally, with respect to Applicant’s claim of acquired distinctiveness based on use,
the Examining Attorney notes that during prosecution, Applicant sought to invoke
“its use of the mark in commerce with goods for five years prior to filing the
application,” id., but was advised that its applications were based on intention to use,
rather than use in commerce, id., and that even if Applicant could establish use and
first use dates “that support a Section 2(f) claim based on five years’ use in commerce,
said claim would still be denied because the applied-for mark is highly descriptive in
the context of the applied-for goods . . . .” Id. at 13.
C. Analysis of Refusals
1. Mere Descriptiveness
As discussed above, in assessing the possible descriptiveness of the proposed mark
TWEEDS for the goods identified in the two applications, we ask “whether someone
who knows what the goods . . . are will understand the mark to convey information
about them.” Real Foods, 128 USPQ2d at 1374. “Tweed” is “a rough woolen fabric
made usually in twill weaves and used especially for suits and coats ,”17 and with
respect to the Class 25 goods identified in Serial No. 87214622, Applicant
acknowledges that the “examples given by the examining attorney use the word
‘tweed’ to indicate the type of shoes; belts; or swimwear being offered ,” 7 TTABVUE
5, and that it “is possible to find shoes; belts; or swimwear that are made of tweed.”

17 February 6, 2017 Office Actions at TSDR 2 (MERRIAM-WEBSTER DICTIONARY).
Serial Nos. 87214622 and 87214637 (Consolidated)
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Id. The Internet webpages in the record, including those reproduced above, show
“shoes; belts; or swimwear that are made of tweed ,” id., and that are described as
such. They establish that a consumer who knows that the goods sold under the
proposed mark TWEEDS are shoes, belts, and swimwear will immediately
understand TWEEDS to convey information about a key feature of the goods, namely,
that they are made of tweed fabric. We find that the Examining Attorney established
a prima facie case that TWEEDS is merely descriptive of each of the Class 25 goods
in the application, and that Applicant did not rebut that showing. Fat Boys, 118
USPQ2d at 1513.
With respect to the goods identified in Serial No. 87214637, Applicant does not
dispute that the record shows that there are pillow cases, duvet covers, draperies,
fabric valances, bed sheets, and bedspreads that are made of tweed fabric, and that
are described as such. This evidence establishes that a consumer who knows that the
goods sold under the proposed mark TWEEDS are pillow cases, duvet covers,
draperies, fabric valances, bed sheets, and bedspreads will immediately understand
the mark to convey information about a key feature of the goods, namely, that they
are made of tweed fabric.
Applicant’s only response to the Examining Attorney’s showing is that these goods
“are not commonly known to be made from tweed material,” 8 TTABVUE 5, and that
“[t]weed is a fabric, not Bed sheets, pillow cases, comforters, bedspreads, pillow
shams, bed ruffles, duvet covers, comforter covers, mattress pads, bed blankets,
Serial Nos. 87214622 and 87214637 (Consolidated)
- 18 -

towels, wash cloths, fabric shower curtains, draperies or fabric valances.” Id. at 4.
These arguments have no support in the record,18 and are unavailing in any event.
As noted above, the issue is not whether TWEEDS is a generic name for the Class
24 goods, i.e., “the common descriptive name of a class of goods . . . .” In re James
Haden, M.D., P.A., 2019 USPQ2d 467424, *2 (TTAB 2019) (quoting In re Cordua
Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (internal quotation
omitted)). Instead, the issue is whether TWEEDS immediately tells a consumer about
a feature of the pillow cases, duvet covers, draperies, fabric valances, bed sheets, or
bedspreads sold under that proposed mark. Even if “Applicant may be the first or
only user of [the plural] term” TWEEDS for those goods, Fat Boys, 118 USPQ2d at
1514, rarity of use “does not render the term distinctive, if it otherwise meets the
standard” for descriptiveness set forth in Gyulay, Chamber of Commerce, and
DuoProSS. Id. The record shows that TWEEDS immediately informs consumers that
the pillow cases, duvet covers, draperies, fabric valances, bed sheets, and bedspreads
identified in the application are made of tweed fabric. We find that the Examining
Attorney established a prima facie case that TWEEDS is merely descriptive of several
of the Class 24 goods in the application, and that Applicant did not rebut that
showing. Id. at 1513.

18 They are based solely on argument of counsel, which is “no substitute for evidence.” In re
OEP Enters., Inc., 2019 USPQ2d 309323, *14 (TTAB 2019) (quoting Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (internal quotation omitted)).
At the oral hearing, Applicant’s counsel suggested that the Board take judicial notice of this
alleged fact. We decline to do so. See Medline Indus., 2020 USPQ2d 10237 at *2-3 (declining
to take judicial notice of the nature and number of various shades of green because the alleged
facts were subject to reasonable dispute and were not generally known).
Serial Nos. 87214622 and 87214637 (Consolidated)
- 19 -

2. Acquired Distinctiveness
We turn now to whether Applicant may register TWEEDS on the Principal
Register for the goods in its two applications because it “has become distinctive of the
applicant’s goods in commerce.” 15 U.S.C. § 1052(f). “To assess Applicant’s burden in
showing acquired distinctiveness, we must determine the degree of descriptiveness
of [TWEEDS].” Guaranteed Rate, 2020 USPQ2d 10869 at *3 (citing In re Virtual
Indep. Paralegals, LLC, 2019 USPQ2d 111512, *10 (TTAB 2019) (internal citation
omitted)).
In Guaranteed Rate, the Board found that because the proposed mark
GUARANTEED RATE for various mortgage-related services “immediately conveys a
feature of the services (i.e., a mortgage rate that will not change),” the term
“‘guaranteed rate’ rises to the level of being a key aspect of the services” and was thus
highly descriptive. Id. at *3 & n.9. Although we need not and do not find that
TWEEDS is a generic name for sub-groups of clothing and bedding products that are
made of tweed fabric, TWEEDS immediately and unequivocally describes a
significant feature of such goods. The material from which a textile product is made
is an important feature of such goods, and we agree with the Examining Attorney
that the proposed mark is thus highly descriptive of the goods.
As noted above, all intent-to-use applicants “face a heavy burden in establishing
that their mark will acquire distinctiveness when use commences,” Olin, 124
USPQ2d at 1335, and the highly descriptive nature of the proposed mark TWEEDS
also places a heavy burden on Applicant to prove that TWEEDS has acquired
distinctiveness. As the Board has explained:
Serial Nos. 87214622 and 87214637 (Consolidated)
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[T]he greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in light
of the nature of the designation. Highly descriptive terms,
for example, are less likely to be perceived as trademarks
and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of
acquired distinctiveness thus will ordinarily be required to
establish that such terms truly function as source-
indicators.
Virtual Indep. Paralegals, 2019 USPQ2d 111512 at *10 (quoting In re Greenliant Sys.
Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010)). See also La. Fish Fry Prods., 116 USPQ2d
at 1265; In re Boston Beer Co., 195 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999).
An applicant “may submit one or any combination of” the types of evidence of
acquired distinctiveness discussed in Trademark Rule 2.41(a), Guaranteed Rate, 2020
USPQ2d 10869 at *2, and “[o]ur ultimate Section 2(f) analysis of acquired
distinctiveness and determination in this case is based on all of the evidence
considered as a whole.” Id. In determining whether TWEEDS has acquired
distinctiveness for the goods identified in the application, we may consider multiple
factors, including “(1) association of [TWEEDS] with [Applicant] by actual purchasers
(typically measured by customer surveys); (2) length, degree, and exclusivity of use;
(3) amount and manner of advertising; (4) amount of sales and number of customers;
(5) intentional copying; and (6) unsolicited media coverage of the product embodying
the mark.” Id. at *2-3 (quoting In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB
2018) (quoting Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d
1538, 1546 (Fed. Cir. 2018)).
Serial Nos. 87214622 and 87214637 (Consolidated)
- 21 -

Applicant offers no surveys, evidence regarding advertising or the amount of sales
and number of customers, evidence of intentional copying, or evidence of unsolicited
media coverage of its goods bearing the proposed mark. Instead, Applicant relies on
(1) its ownership of cancelled Registration No. 1697698 and, in Serial No. 87214622,
Registration No. 4861285; (2) its unsupported claims that it has been using TWEEDS
on similar goods since 1987; and (3) its unsupported claim that it has enforced the
TWEEDS mark against potential infringers, who have never claimed that the mark
is generic or descriptive. Applicant also argues in Serial No. 87214622 that
[i]n refusing registration of this application based on highly
descriptiveness [sic], the Examining Attorney is running
counter to the previous correct findings of the USPTO. The
Examining Attorney has not shown or proved any changes
to the marketplace or commerce which would covert
“TWEEDS” from a mark that was placed and registered on
the principal register to a mark that is generic or highly
descriptive.
7 TTABVUE 6. Considered as a whole, Applicant’s evidence falls far short of carrying
Applicant’s heavy burden of showing that TWEEDS has acquired distinctiveness for
any of the goods identified in the two applications.
With respect to the two registrations, Trademark Rule 2.41(a) provides that an
applicant’s “ownership of one or more active prior registrations on the Principal
Register . . . of the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently similar to the goods and
services in the application.” 37 C.F.R. § 2.41(a). Neither of the registrations qualifies
as evidence of distinctiveness under the rule, however, because Registration No.
Serial Nos. 87214622 and 87214637 (Consolidated)
- 22 -

1697698 is not “active” and Registration No. 4861285 is not “on the Principal
Register.”
Applicant’s claim of long use of TWEEDS is based solely on argument of counsel,
not a sworn statement or other evidence establishing the facts of the claimed use. As
indicated above, that is not sufficient. Cf. Guaranteed Rate, 2020 USPQ2d 10869 at
*4-6 (recounting contents of the declaration of the applicant’s Chief Compliance
Officer that provided sales and advertising figures, the number of the applicant’s
customers, examples of the applicant’s advertising, and evidence of media coverage
of services offered under the claimed mark); Hikari Sales, 2019 USPQ2d 111514 at
*15-16 (discussing contents of the declaration of the applicant’s President and Chief
Operating Officer regarding the applicant’s sales and advertising under the claimed
mark). As noted above, argument that TWEEDS “is a long standing brand and is
recognized by the relevant public as such,” 7 TTABVUE 6-7 (Serial No. 87214622); 8
TTABVUE 5 (Serial No. 87214637), is no substitute for evidence showing such
recognition, and because the record is devoid of such evidence, we find that
Applicant’s bald claims are insufficient to show that TWEEDS has acquired
distinctiveness.19

19 Applicant claimed in each application that its mark had acquired distinctiveness under
Section 2(f) based on substantially exclusive and continuous use of the mark for at least the
five years before the date of its claims. August 29, 2017 Responses to Office Actions at TSDR
1. As noted above, however, the Examining Attorney rejected those claims and required
Applicant to submit additional evidence of acquired distinctiveness. October 6, 2017 Office
Actions at TSDR 1. If Applicant’s claims of use since 1987 are true, we are at a loss to
understand why no supporting declaration providing the particulars of the use was offered.
Serial Nos. 87214622 and 87214637 (Consolidated)
- 23 -

Applicant’s enforcement efforts are similarly unpersuasive of acquired
distinctiveness. As the Examining Attorney points out, “Applicant did not submit any
documentation regarding the underlying claims in any of these enforcement actions,”
13 TTABVUE 14, and there is “no evidence of record to support” Applicant’s argument
that “‘TWEEDS’ has never been . . . found to be generic or descriptive in these
enforcement actions . . . .” Id. Moreover, the TTABVUE docket entries attached to
Applicant’s brief in Serial No. 87214622 show that default judgments were entered
in Opposition Nos. 91224843 and 91220719 after the applicant in Opposition No.
91224843 failed to answer, and after the applicant in Opposition No. 91220719
unilaterally withdrew its application. 7 TTABVUE 9-12. There is no evidence that
the applicants ceased, or agreed to cease, the use of the applied-for marks, and in the
absence of evidence that the abandonment of the applications was based on
recognition of Applicant’s rights in the term TWEEDS, the applicants’ actions in
these cases simply “show[ ] a desire by those competitors to avoid litigation, rather
than distinctiveness of the term.” Hikari Sales, 2019 USPQ2d 111514 at *5 (citing In
re Wella Corp., 565 F.2d 143, 196 USPQ 7, 8 n.2 (CCPA 1977)).
Finally, Applicant’s argument that the Examining Attorney’s refusal to register
TWEEDS is inconsistent with the USTPO’s past registration of TWEEDS is
meritless. “Trademark rights are not static, and eligibility for registration must be
determined on the basis of the facts and evidence of record that exist at the time
registration is sought.” In re Cordua Rests. LP, 110 USPQ2d 1227, 1233 (TTAB 2014),
aff’d, In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). In
Serial Nos. 87214622 and 87214637 (Consolidated)
- 24 -

Cordua Rests., the Federal Circuit affirmed the Board’s decision finding that the
stylized mark CHURRASCOS for restaurant services was a generic name for the
services even though the applicant owned a subsisting registration of CHURRASCOS
in standard characters for the same services. The court held that
The PTO is required to examine all trademark applications
for compliance with each and every eligibility requirement,
including non-genericness, even if the PTO earlier
mistakenly registered a similar or identical mark suffering
the same defect. Thus, whether or not the term
“churrascos” was generic when it was registered, we, like
the Board, must evaluate the evidence in the present
record to determine whether there is sufficient evidence to
establish that it is ineligible.
Cordua Rests., 118 USPQ2d at 1635.
Accordingly, even if the proposed TWEEDS mark was previously (and properly)
registered for sufficiently similar goods to those identified in the two current
applications, “we must evaluate the evidence in the present record to determine
whether there is sufficient evidence to establish that it is ineligible” for registration
for the goods for which registration is sought now. Id. For the reasons discussed
above, the record supports the Examining Attorney’s determination that TWEEDS is
merely descriptive today of one or more of the goods identified in each application,
and that the term has not acquired distinctiveness. The proposed mark is thus
ineligible for registration on the Principal Register.
Decision: The refusals to register are affirmed in both appeals.