Cleanfield Holding NV

Trademark Trial and Appeal Board

May 25, 2021

88034129 (T.T.A.B. May. 25, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cleanfield Holding NV
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Serial No. 88034129
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David A. Lowe of Lowe Graham Jones PLLC,
for Cleanfield Holding NV.
Naakwama Ankrah, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Kuhlke, Taylor and Adlin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Cleanfield Holding NV (“Applicant”) seeks registration on the Principal Register
of the designation YOGA GIRL (in standard characters) for, as amended, the
following goods: “Baby carrying bags; Beach bags; Cosmetic bags sold empty; Courier
bags; Diaper bags; Luggage; Sports bags; Travel bags; Wallets,” in International
Class 18.1 At the request of the Examining Attorney, the word “YOGA” is disclaimed.

1 Application Serial No. 88034129 was filed on July 11, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The application claims ownership of U.S. Registration
Nos. 4690193, 4899600, and 5239405.
Serial No. 88034129
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The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that it is merely descriptive of the goods under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed. Both Applicant and the
Examining Attorney filed briefs.2 We affirm the refusal to register.
I. Arguments and Evidence
The Examining Attorney argues that YOGA GIRL merely describes an intended
user of Applicant’s goods. In support of this position the Examining Attorney
submitted the following:
Third party registrations of marks for goods the same as or similar to those of
Applicant’s and which include a disclaimer of the word GIRL. These registrations
include:3

As originally filed, the application identified additional goods and services, including
additional goods in International Class 18, which have been divided from this application
and now reside in application Serial No. 88977233.

2 Applicant submitted with its appeal brief evidence duplicative of some of that submitted
during prosecution. Re-submitting materials which were previously submitted is
unnecessary. In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015) (practice of
attaching to appeal brief copies of the same exhibits submitted with responses is
discouraged); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008)
(attaching as exhibits to brief material already of record requires Board to determine whether
attachments had been properly made of record and adds to the bulk of the file); In re Thor
Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs
is duplicative and is unnecessary).
3 August 28, 2019 Office Action, TSDR 4-32.
Page references herein to the application record are to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
are to the Board’s TTABVUE docket system.
Serial No. 88034129
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Registration No. Mark Relevant Goods
4328724 MUDDY GIRL Backpacks; handbags;
pocketbooks; purses
4672663 HOMEFRONT GIRL Cosmetic bags sold empty;
wallets; tote bags
4925016 MORET ACTIVE GIRL Backpacks, gym bags
4776064 IMPERIAL GIRL Purses; wallets
5186928

Backpacks; duffel bags; sports
bags; tote bags; wallets
5536133

Backpacks; wallets
5065963 BRONZE GIRL Purses and wallets
5464732

Backpacks
5704884 GIRL FLU Carrying cases
5665608 BOXY GIRL Cosmetic bags and cases sold
empty; travel bags
The Examining Attorney also requests, and we take, judicial notice of the
definition of the word “girl” from MERRIAM-WEBSTER (www.merriam-
webster.com.dictionary/girl) defined as “young woman.”4
Applicant, by contrast, maintains that its proposed mark is merely suggestive of
its goods, and argues that the USPTO failed to make a prima facie case that its
proposed mark YOGA GIRL is merely descriptive of the identified goods and that any
doubt as to descriptiveness must be resolved in its favor. Applicant has supported its
position with the following:

4 6 TTABVUE 14. The Board may take judicial notice of dictionary definitions, including
online dictionaries which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d
1227, 1229 n.4 (TTAB 2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002).
Serial No. 88034129
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Thirty third-party registrations for marks that include the term GIRL(S) for
“similar” goods, none of which include a disclaimer of GIRL. We reproduce below the
charts from Applicant’s Appeal Brief listing these registrations.5

5 Applicant’s February 28, 2020 Response, TSDR 16-76. We give no value to Registration Nos.
4431601 and 4407784 because they have expired. An expired or cancelled registration is
evidence of nothing but the fact that it once issued. Sunnen Prods. Co. v. Sunex Int’l Inc., 1
USPQ2d 1744, 1747 (TTAB 1987).

Serial No. 88034129
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Serial No. 88034129
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Upon review of the listed registrations, we find that Registration Nos. 5994018,
5979323, 5945396, 5936317, 5924074, 5914747 and 5253600 cover goods that are not,
from the face to the identifications, similar to the goods at issue in this proceeding.
According, these registration have no probative value. We also give no consideration
to the marks in Registration Nos. 5924754, 5995556, 5990003, 5989830, 5983145 and
4080857 because no disclaimer is required as they are unitary compound word marks
Serial No. 88034129
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or hyphenated word marks. See generally TRADEMARK MANUAL OF EXAMINING
PROCEDURE Section 1213.05(a) (Oct. 2018). That leaves only 15 registrations that
tend to support Applicant’s position and 10 which tend to support the Examining
Attorney’s position.
II. Decision
A. Applicable law
Section 2(e) (1) of the Trademark Act, 15 U.S.C. § 1052(e) (1), prohibits
registration of a mark which, when used on or in connection with an applicant’s goods
or services, is merely descriptive of them. A term is merely descriptive of goods or
services if it conveys an immediate idea of a quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gauley, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). That is, to be merely descriptive, a term need
only describe a single significant quality or property of the goods or services. Gauley,
3 USPQ2d at 1009; Methanide Metal Corp. v. Int’l Nickel Co., 262 F.2d 806, 120 USPQ
293, 294 (CCPA 1959). The requirement of “merely,” or as Applicant characterizes it,
“only,” does not mean that a term serves no purpose other than to describe the goods.
Rather, descriptiveness is determined in relation to the goods as identified; that a
term has different meanings in different contexts is not controlling. In re Bright-Crest
Ltd., 204 USPQ 591, 593 (TTAB 1979). So long as any one of the meanings of a term
is descriptive, the term may be considered to be merely descriptive. In re Mueller
Serial No. 88034129
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Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper
Indus., 222 USPQ 258, 259 (TTAB 1984)).
A mark also is descriptive if it describes the intended users of the goods or services.
See, e.g., In re Paralytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004) (GASBUYER
merely descriptive identifying an intended user of applicant’s services of “providing
on-line risk management services in the field of pricing and purchasing decisions for
natural gas”); Hunter Pubs’ Co. v. Caulfield Pubs’ Ltd., 1 USPQ2d 1996 (TTAB 1986)
(SYSTEMS USER found merely descriptive of a trade journal directed toward users
of large data processing systems); In re Camel Mfg. Co., 222 USPQ 1031, 1032 (TTAB
1984) (“[T]here is no doubt that the group described by the term ‘MOUNTAIN
CAMPER’ is a category of purchaser to whom applicant specifically directs its
camping equipment”; MOUNTAIN CAMPER held descriptive of retail services in the
field of selling camping equipment).
Whether a term is merely descriptive is determined not in the abstract, but in
relation to the goods for which registration is sought, the context in which it is being
used on or in connection with those goods, and the possible significance that the term
would have to the average purchaser of the goods because of the manner in which the
mark is used or intended to be used. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). The question is whether someone who knows
the goods will understand the term to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012).
Serial No. 88034129
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When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
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,
the combination results in a composite that is itself merely descriptive. See, e.g.,
DuoProSS, 103 USPQ2d at 1757 (SNAP SIMPLY SAFER merely descriptive of
“medical devices, namely, cannulae; medical, hypodermic, aspiration and injection
needles; medical, hypodermic, aspiration, and injection syringes”).
B. Analysis
With regard to the term YOGA, Applicant argues that “it is improper for the Office
to ignore completely the disclaimed YOGA portion of the mark, but instead must view
the mark as a whole.”6 While, as Applicant correctly points out, a mark comprising
more than one element must be considered as a whole and should not be dissected,
we nonetheless may consider the significance of each element separately in the course
of evaluating the mark as a whole. See DuoProSS 103 USPQ2d at 1756-57 (reversing
finding that is not merely descriptive for medical devices, but noting that
“[t]he Board to be sure, can ascertain the meaning and weight of each of the
components that makes up the mark”).
As the Examining Attorney correctly observes, Applicant has disclaimed the word
YOGA and, by that action, Applicant has conceded that YOGA is merely descriptive

6 4 TTABVUE 7 (Applicant’s brief p. 6).
Serial No. 88034129
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of its identified goods. See In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4
(TTAB 1988) (“By its disclaimer of the word LITE, applicant has conceded that the
term is merely descriptive as used in connection with applicant’s goods.”) (citing State
Oil Refining Corp. v. Quaker Oil Corp., 161 USPQ 547 (TTAB 1969), aff’d, 453 F.2d
1296, 172 USPQ 361 (CCPA 1972)). A definition of “yoga,” i.e., “n. 2 [a] system of
stretching and positional exercises derived from this discipline to promote good
health, fitness, and control of the mind,”7 of which we take judicial notice, further
supports that the YOGA component of Applicant’s mark is merely descriptive of a
purpose of Applicant’s sports bags, namely that they may be used to carry yoga
equipment or clothing.8
For the reasons discussed, we find unavailing Applicant’s contention that the
Examining Attorney ignored completely the disclaimed YOGA portion of the mark.
As to the GIRL portion of Applicant’s proposed mark, the definition of record
clearly demonstrates that it is descriptive of, at a minimum, a user of Applicant’s
sports bags. That a girl may not be the only user of a sport bag does not detract from
our finding. A mark may be merely descriptive even if it does not describe the ‘full

7 ahdictionary.com/word/search.html?q=yoga, last visited May 14, 2021.
8 We note that Applicant’s identification of goods includes additional items. However,
contrary to Applicant’s position, we need not find the mark descriptive of each and every item
in the identification of goods. If Applicant’s mark is merely descriptive for any of the listed
goods in a single class in the application it cannot be registered, even if it is not merely
descriptive with respect to other identified goods in that class. “A descriptiveness refusal is
proper ‘if the mark is descriptive of any of the [goods or] services for which registration is
sought.’” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re
Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)). See also In re
Franklin Cnty. Hist. Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).
Serial No. 88034129
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scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP,
373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001)).
Further, we do not rely on the third-party registrations of record for GIRL-
formative marks with or without a disclaimer of the word GIRL in making our
finding. These competing registrations submitted by both the Examining Attorney
and Applicant do not indicate a clear practice one way or another regarding
disclaimers in marks including the word “GIRL.” The most that can be said of this
evidence is that it is inconclusive. Indeed, these registrations highlight why prior
decisions in other applications are not binding on the Board and underscore the need
to evaluate each case on its own record. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). See also In re International Taste Inc., 53 USPQ2d
1604, 1606 (TTAB 2000) (“With respect to third-party registrations which include
disclaimers...we do not have before us any information from the registration files as
to why an Examining Attorney required and/or why the applicant/registrant offered
such disclaimers.”).
Next, we must determine whether the combination of these individual descriptive
terms is itself descriptive, or whether the resulting term evokes a new and unique
commercial impression. As previously stated, when the mark is considered as a
whole, if the merely descriptive components retain their merely descriptive
significance in relation to the goods and services, then the resulting combination is
Serial No. 88034129
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also merely descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1372; In
re Tower Tech, 64 USPQ2d 1314 (TTAB 2001) (SMARTTOWER held merely
descriptive of commercial and industrial cooling towers).
Applicant contends that “[t]he Office Action fails to make a prima facie case that
the overall commercial impression of the YOGA GIRL is ‘merely,’ or 100%, descriptive
of the goods for which it is intended to be used, as opposed to suggestive or even
arbitrary.”9 In making this argument, Applicant’s relies on a variety of decisions
where the Board found the subject mark not to be descriptive. We find this reliance
misplaced. As stated, each case must be decided on its own records and facts and the
Board is not bound by prior decisions involving different records and very different
marks. See Nett Designs, 57 USPQ2d at 57.
Similarly, that the Office approved for registration on the Principal Register other
applications for the mark YOGA GIRL owned by Applicant for other goods and
services is unpersuasive of the outcome of this case.10 The question of whether a mark
is merely descriptive is determined based on the evidence of record at the time each
registration is sought. In re theDot Commc’ns, 101 USPQ2d 1062, 1064 (TTAB 2011);
TMEP § 1209.03(a). See also Cordua Rests., 118 USPQ2d at 1635 (The presumption
of validity of 15 U.S.C. § 1057(b) does not carry over from registration of the older

9 4 TTABVUE 5 (Applicant’s brief p. 4).
10 We also point out that Applicant has claimed ownership of three prior registrations for the
YOGA GIRL mark for different goods and services, two on the Supplemental Register and
one registered with a claim of acquired distinctiveness under Section 2(f) of the Act.
Serial No. 88034129
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mark to a new application for registration of another mark that happens to be similar
(or even nearly identical).
In this case, the wording “YOGA GIRL,” as a whole, immediately describes the
intended user of Applicant’s sports bags. We are not persuaded by Applicant’s
unsupported contention that the combination of the words “YOGA GIRL” creates an
incongruity. Instead, based on Applicant’s disclaimer of the word YOGA, and the
commonly understood and demonstrated meanings of the words YOGA and GIRL
comprising Applicant’s mark, we find that YOGA GIRL, as a whole, is merely
descriptive. The proposed mark immediately describes the fact that an intended user
of Applicant’s sports bags are women who practice yoga. Nothing in the combination
of terms which comprise Applicant’s proposed mark is incongruous, indefinite or
ambiguous when considered in relation to Applicant’s goods and, consequently, no
imagination, thought or gathering of further information would be necessary in order
for customers to perceive the merely descriptive significance of YOGA GIRL.
Applicant is mistaken in its assertion that “[t]he fact that there is no dictionary
definition for YOGA GIRL is both persuasive and controlling,” and “weighs against a
descriptiveness conclusion.”11 See e.g., In re Omniome, Inc. 2020 USPQ2d 3222, *11
(TTAB 2019) (“[T]he fact that there is no dictionary definition for the combined
wording SEQUENCING BY BINDING or that there are other uses that may not
directly support a descriptiveness finding is not dispositive.”). That Applicant may be
the first user of YOGA GIRL does not render it distinctive if, as in this case, it is

11 4 TTABVUE 4 (Applicant’s brief p.3).
Serial No. 88034129
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otherwise found to be merely descriptive. See KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (trademark law does
not countenance someone obtaining “a complete monopoly on use of a descriptive term
simply by grabbing it first”) (citation omitted).
Lastly, Applicant asserts that there is doubt as to the mere descriptiveness of
YOGA GIRL, and that such doubt must be resolved in its favor. Applicant is correct
that where there is doubt as to whether a mark is merely descriptive, that doubt must
be resolved in favor of the Applicant. However, we have no doubt as to the
descriptiveness of YOGA GIRL when used in connection with Applicant’s identified
goods.
C. Conclusion
After careful consideration of all of the evidence and arguments presented, we
conclude that when applied to Applicant’s identified goods, YOGA GIRL immediately
describes, without any multi-step thought process, that consumers of Applicant’s
“sports bags” include girls that practice yoga.
Decision: The refusal to register YOGA GIRL pursuant to Section 2(e)(1) of the
Trademark Act is affirmed.