Closet Clothing Co. Limited

Trademark Trial and Appeal Board

Mar 5, 2008

No. 76623748 (T.T.A.B. Mar. 5, 2008)

Mailed: March 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Closet Clothing Co. Limited
________

Serial No. 76623748
_______

Timothy J. Lockhart of Willcox & Savage P.C. for applicant.

Ingrid Eulin, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______

Before Quinn, Grendel, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Closet Clothing Co., Ltd. seeks registration on the
Supplemental Register of the mark MINK BIKINI for:
Articles of outerwear for women, namely, dresses,
trousers, skirts, jumpsuits, pantsuits, blouses,
vests, cardigans, sweaters, waistcoats, coats,
jackets, raincoats, scarves, belts, headbands,
caps, hats, socks, hosiery, and footwear,
excluding bikini swimwear, bikini underwear, and
all other types of bikini clothing and all
clothing made of mink.

International Class 25 (as amended).1

1 Filed December 8, 2004, based upon Trademark Act § 44(d),
claiming a priority date of June 29, 2004. Applicant perfected
its basis for registration under Trademark Act § 44(e) by filing
a copy of United Kingdom Registration No. 2366971.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76623748
2
Registration has been finally refused on the ground
that the mark as used on the identified goods is deceptive.
Trademark Act § 2(a); 15 U.S.C. § 1052(a). Applicant and
the examining attorney have filed briefs.
We affirm.
A brief review of the pertinent procedural history of
this application will be useful: Applicant originally
sought registration on the Principal Register, which the
examining attorney refused, alleging that the mark was
descriptive under Trademark Act § 2(e)(1). After applicant
amended its identification of goods to “exclud[e] bikini
swimwear and clothing made of mink,” the examining attorney
approved the application for publication. However, the
approval was withdrawn and the descriptiveness refusal
reinstated. The Examining attorney further refused
registration of the mark as deceptive. Following amendment
of the application to seek registration on the Supplemental
Register, the examining attorney withdrew the refusal under
Trademark Act § 2(e)(1) and made final the deceptiveness
refusal.
I. Applicable Law
The test for determining whether a mark is deceptive
under Trademark Act § 2(a) has been stated by the Court of
Appeals for the Federal Circuit as follows: 1) Is the term
Serial No. 76623748
3
misdescriptive of the character, quality, function,
composition or use of the goods? 2) Are prospective
purchasers likely to believe that the misdescription
actually describes the goods? and 3) Is the misdescription
likely to affect the decision to purchase? In re Budge
Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260
(Fed. Cir. 1988). Trademark Act § 2(a) is a bar to
registration on both the Principal and the Supplemental
Register. Trademark Act § 23(a); 15 U.S.C. § 1091.
II. Record on Appeal
The examining attorney has submitted various evidence
in support of the refusal to register. We find the
following particularly relevant:
• Dictionary definitions:2
o mink
....
1. Any of various semiaquatic carnivores of the
genus Musatela, especially M. vison of North
America, resembling the weasel and having short
ears, a pointed snout, short legs, and partly
webbed toes.

2. a. The soft, thick, lustrous fur of this
animal. b. A coat, stole or hat made of the
fir of this animal.

o bikini
....

2 Two more dictionary definitions of “mink” were added to the
final Office action, although it is not clear what, if anything,
they add to the one quoted above.
Serial No. 76623748
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1. a. A very brief, close-fitting two-piece
bathing suit worn by women. b. A very brief,
close-fitting bathing suit worn by men.

2. Often bikinis. Brief underpants that reach up
to the hips rather than to the waist.

THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (3d
ed. 1992)(electronic version).

• The first page of search results lists for the words
“mink clothing” from both Google and Ebay

• Copies from numerous webpages3 indicating
advertising and sale of clothing made of (or
including parts made of) mink fur, and information
regarding the use of fur as clothing, including:

o Two web pages advertising fur products by “Attila
the Hun.” “Attila specializes in customized fur
... apparel and accessories.... Categories
include ... fur hats, mitts, and headbands, fur
swimwear.... Select from premium taxidermy furs
in wolf, fox, wolverine, mink, marten, beaver,
otter and more!” and “The beaver bikini is a Hun
exclusive.... Available also in otter for the
shorter, cropped look.”

o amazon.com listing for a “Fox Fur Thong Bikini,”
at $220.00 – $320.00.

o Wild Things Trading-Post web listing for a fur
bikini: “Rabbit fur thong bikini with adjustable
deerskin ties and fur tail.”

o Several articles from the Internet

From the New York Times, October 30, 2006,
an article discussing the recent use of mink
for sportswear;

3 None of the examining attorney’s web-based evidence includes
the URL or the date on which the image was captured. Such
information should be included so that the applicant may examine
the source of the evidence. Nonetheless, because applicant did
not object to the use of such evidence, it waived any objection
on that basis.
Serial No. 76623748
5

Steve Rubin, From Bardot to Graf, from
Ground Zero to Grass, Here’s the Skinny on
the Two-Piece, Bikini Atoll. This article
discusses the history of bikini swimwear,
noting many variations on the theme. The
mink bikini, it is explained, first debuted
at the Venice Film Festival in 1955,
providing partial cover for “pinup girl
Diana Dors.”

From StyleHive, a description of a “Faux Fur
kini top” selling for $35.00.

Dan Monk, Business Courier, Fake Fur Firm
Dressing for SI Bikini Shoot. This article
discusses a “faux-fur bikini” for Sports
Illustrated’s swimsuit edition.

• A number of articles extracted from the LEXIS/NEXIS
database discussing generally the quality and
selection of fur clothing, and mink clothing in
particular.4

Applicant has submitted the following evidence in support
of registration:
• Three “Declaration[s] ... that the mark is at most
misdescriptive.” One declaration was signed by
applicant’s “co-director,” one by a dealer in
applicant’s goods, and one by a customer of
applicant’s goods. Attached to applicant’s
declaration was:

o Applicant’s registration of MINK BIKINI from the
U.K. Trade Marks Registry.

4 This evidence comprises approximately 75 pages, although none
of the articles is specifically mentioned or quoted in the
examining attorney’s Office actions or brief. The relevance of
much of this submission is unclear, and it seems to have been
attached simply to support the assertion (not contested by
applicant) that mink is a highly-desired fur which “convey[s] a
sense of wealth and opulence to the owner.” It would have been
helpful in reviewing this record if the examining attorney had
been more specific as to why this evidence was submitted.
Serial No. 76623748
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o The webpage of a shop in the U.K. which carries
applicant’s goods, www.bath.co.uk/pinstripes.

o A copy of a page (no source or URL indicated)
which discusses applicant’s “Silk Bow Dress.”5

III. Deceptiveness under Trademark Act § 2(a)
At the outset, we note applicant’s argument that the
misdescriptiveness of its mark “comes from the phrase MINK
BIKINI,” not just the word “mink” in isolation. For
instance, applicant claims that the examining attorney has
[d]isregard[ed] why the mark “works” – that is,
disregard[ed] the fact that joining the words
“MINK” and “BIKINI” to create a trademark for the
relevant goods results in a mark so highly
misdescriptive – in fact, so ironic – that the
prospective purchasers are simply not likely to
believe that the mark actually describes the
goods or to be influenced by the misdescription.

Reply Br. at 1. The mark as a whole, applicant argues, is
therefore not deceptive.
There is no requirement that the entire mark be
deceptive (or even descriptive) in order to refuse
registration under Trademark Act § 2(a). Many cases have
found compound marks deceptive based on only one element of
the mark. See, e.g., In re Budge Mfg. Co., 8 USPQ2d 1790
(TTAB 1987), aff’d 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir.
1988)(LOVEE LAMB); In re Phillips-Van Heusen Corp., 63

5 This page includes the following notation: “Length (centre
back): 42 in (107 cm).” The use of the British spelling of
Serial No. 76623748
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USPQ2d 1047 (TTAB 2002)(SUPER SILK); In re Perry Mfg. Co.,
12 USPQ2d 1751 (TTAB 1989)(PERRY NEW YORK); In re Shapely,
Inc., 231 USPQ 72 (TTAB 1986)(SILKEASE); Evans Products Co.
v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983)(CEDAR
RIDGE).
Moreover, we disagree with applicant that its mark
would be seen as “ironic” or incongruous, such that
prospective purchasers would not believe the
misdescription. The examining attorney’s evidence shows
that the mark is not incongruous because bikinis made of
mink and other furs are actually available, and have been
exposed to the public through celebrities and well-
distributed fashion photographs. While we doubt that the
market for fur swimwear is a large segment of the larger
swimwear market, it nevertheless does exist, making the
mark plausible, rather than incongruous. In short, the
addition of “bikini” to the word “mink” does not transform
the latter into something else which would not be
understood to refer primarily to fur or fur swimwear.
A. Is MINK BIKINI Misdescriptive?
There is no dispute as to the meaning of “mink,” and
the evidence of record amply supports the examining

“center” and inclusion of the measurement in centimeters implies
that this website is also from a U.K. source.
Serial No. 76623748
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attorney’s contention that a wide variety of clothing is
made of (or includes) mink fur. Here, applicant has
indicated that its goods are not made of mink, and has
amended its identification of goods to specifically exclude
such products. There is no doubt that applicant’s mark is
misdescriptive; indeed, applicant agrees that its mark
misdescribes the composition of its goods. Applicant’s Br.
at 3.
We are aware, of course, that applicant has expressly
“exclud[ed] bikini swimwear, bikini underwear, and all
other types of bikini clothing and all clothing made of
mink” from its identification of goods. Nonetheless, this
exclusion is ineffective to avoid a deceptiveness refusal.
Applicant argues that customers could not possibly mistake
something like silk (which some of its goods are made of)
for mink. But while applicant has excluded mink from its
mark, it has not excluded articles made of other types of
fur, or even fake fur, which could clearly be confused with
mink. Thus, applicant’s goods include items made of other
furs or fur-like material that could indeed be mistaken for
mink.
Moreover, it is highly unlikely that prospective
purchasers of applicant’s products would be aware of
applicant’s narrow exclusion of mink or bikinis from its
Serial No. 76623748
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trademark registration, should one issue. Cf. Electro
Corp. v. Electro Sensors, Inc., 196 USPQ 315, 320 (TTAB
1977)(“prospective purchasers ... would not be aware of the
disclaimers, much less of their significance; as it has
been indicated, they slumber in the archives of the Patent
Office.”). Exclusion of goods in this way simply
guarantees the falsehood of an otherwise plausible feature
or characteristic named in the mark, and is ineffective to
mitigate the effect of an otherwise deceptive mark. See In
re Budge, 8 USPQ2d at 1261, n.3 (LOVEE LAMB found deceptive
for “automotive seat covers”; applicant’s proffered
amendment to “simulated sheepskin automotive seat covers”
would not have helped).
B. Are Prospective Purchasers Likely to Believe the
Misdescription?

Applicant focuses much of its argument on its belief
that purchasers of its products are not likely to believe
that applicant is offering clothing made of mink.
Applciant correctly states the general proposition that
“[i]f a term immediately conveys such an idea but the idea
is false, although plausible, then the term is deceptively
misdescriptive and is unregistrable under [Trademark Act]
Serial No. 76623748
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§ 2(e)(1),”6 and that “the test for deceptiveness focuses on
the potential for confusion among Applicant’s prospective
customers rather than among the population in general.”
Applicant’s Brief at 3-4.
It is apparent, however, that applicant’s argument has
gone off-track when applicant describes the potential
purchaser of its goods:
Applicant’s customers are almost exclusively
women in their late teens, 20s, and early 30s who
live in urban areas, follow fashion trends
closely, buy much of their clothing at small
boutique stores for women, are sophisticated,
discerning, and careful shoppers, and fully
understand that the [g]oods do not include any
type of mink clothing or bikini clothing. Such
sophisticated shoppers are highly unlikely – far
more than just “not likely” – to believe that the
misdescriptive MINK BIKINI mark actually
describes the [g]oods.

Applicant’s Br. at 4 (citations omitted).
While this passage may indeed describe applicant’s
actual customers, it is important to realize that we are

6 Applicant appears here to confuse the issues of deceptiveness
under Trademark Act § 2(a) and deceptive misdescriptiveness under
Trademark Act § 2(e)(1). The latter may be cured by disclaimer,
amendment to the Supplemental Register, or by a showing of
acquired distinctiveness, as appropriate, while the former is an
absolute bar to registration. The concepts are related, however;
the test for determining deceptive misdescriptiveness consists of
the first two elements of the test for deceptiveness set out
above. In this case, the examining attorney properly withdrew
the refusal to register under Trademark Act § 2(e)(1) when
applicant sought registration on the Supplemental Register;
deceptive misdescriptiveness is not a ground for refusal of
registration on the Supplemental Register. See Trademark Act
§ 23.
Serial No. 76623748
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for the most part, not concerned with applicant’s actual
practice in the marketplace;7 applicant seeks to obtain a
trademark registration, and it is thus the application
which is at issue here. Notwithstanding applicant’s
arguments, we are required to construe the application as
broadly as it is written, because what is in the
application will determine the metes and bounds of any
registration which issues from it. See, e.g., Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1
USPQ2d 1813 (Fed. Cir. 1987); In re Linkvest S.A., 24
USPQ2d 1716, 1717 (TTAB 1992); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
In this case, applicant identifies ordinary items of
woman’s clothing. While applicant’s current products may
indeed be high-fashion, small-production clothing sold to a
hip and sophisticated clientele, we may not read such a

7 This application is based on Trademark Act § 44, as noted
above, and applicant has deleted its originally-asserted intent-
to-use filing basis. We assume that applicant’s discussion of
its use of the mark refers to use in another country. This
assumption is supported by applicant’s evidence relating to
actual use of the mark, all of which appears to be from U.K.
sources.
Applicants under Trademark Act § 44 are entitled to a U.S.
registration without demonstrating use of the mark. Nonetheless,
to the extent applicant here relies on evidence of its use in
another country as support for arguments about how consumers
would perceive the mark here, we must view that evidence with
caution, because it is not clear that such perceptions would be
the same in this country. As George Bernard Shaw famously
quipped, “England and America are two countries separated by a
common language.”
Serial No. 76623748
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limitation into applicant’s broadly-described goods. There
is nothing in applicant’s identification of goods that
distinguishes them from the mine run of women’s dresses,
trousers, skirts, jumpsuits, etc. sold in any other store.
On the contrary, we must construe its goods to include all
such items, whether expensive or cheap, fashionable or
plain. Further, in the absence of any restrictions, we
must also presume that applicant’s customers include all of
the usual purchasers for such goods. E.g. In re Elbaum,
211 USPQ at 640. Thus construed, it hardly merits
discussion to say that the potential purchasers of such
goods are not necessarily sophisticated or knowledgeable,
since the relevant class includes all people who buy
women’s clothing.
The relevant question then is not whether applicant’s
actual purchasers would believe that applicant’s actual
goods include mink; instead, we must determine whether
ordinary purchasers of the type of goods identified in the
application would so believe. The evidence of record
indicates that such purchasers would. The examining
attorney has submitted evidence indicating the use of mink
on a variety of clothing items, including coats, jackets,
caps, hats, and even bikinis. It is plain to see that –
in applicant’s own words – the “idea [conveyed by the mark]
Serial No. 76623748
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is ... plausible,” and that it is thus deceptively
misdescriptive, answering in the positive the first two
factors in the test for deceptiveness.
C. Is the Misdescription Likely to Affect the
Decision to Purchase?

We finally consider whether the misdescriptiveness of
the mark would be a factor in a decision to purchase the
goods. The examining attorney submitted pages from several
websites to show that fur in general and mink in particular
is a desirable material for woman’s clothing in general,
and in particularly with respect to at least some of
applicant’s goods. This evidence is sufficient to
establish that mink is perceived by prospective purchasers
as a luxury and high-quality item that imbues the owner
with status and would materially affect the purchasing
decision.
IV. Other Issues
We have carefully considered the declarations
submitted by applicant. Three declarations were submitted,
one each by the applicant’s co-director, a dealer in
applicant’s goods, and by a customer. The declarations are
largely identical, except for the parts of applicant’s
declaration which discuss the attached exhibits.
Serial No. 76623748
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We do not find that these declarations support a
different result in this case for a number of reasons.
First, many of the averments are simply legal arguments
which add nothing to the briefs. Second, the factual
allegations are largely directed to the issue of what
applicant’s goods actually are and to whom they are
actually sold. As discussed above, these issues are not
relevant because the application contains no relevant
limitations on applicant’s goods, channels of trade, or
classes of customers. Third, although some of the
allegations might possibly be relevant, e.g. Applicant’s
Dec. ¶ 17 (“Applicant is not aware of a single customer for
its Goods who has ever requested any MINK BIKINI brand mink
clothing or bikini clothing of any type whatsoever.”), it
is difficult to assess the probative value of such
statements without further information, such as how long
applicant has been selling MINK BIKINI clothing, the volume
of its sales, how many retail outlets it has, and where
they are. It is likewise not stated how long the dealer
and customer have maintained their respective relationships
with applicant.
As noted, applicant has submitted a United Kingdom
certificate of registration for MINK BIKINI. Applicant
argues that this registration is evidence that the
Serial No. 76623748
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examining attorney’s refusal is unfounded. Suffice it to
say that decisions made in another country based on a
different statute have absolutely no relevance here.
Applicant also argues that refusal of its registration
would be inconsistent with the USPTO’s treatment of the
registered marks FRENCH LAUNDRY and GRASS. While
consistency is a worthy goal, each application must be
examined on its own, based on the evidence in the record.
The Board is not bound by the decisions of examining
attorneys in approving other marks for registration.8 In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Finally, applicant notes that the examining attorney
at one point approved applicant’s mark for registration on
the Principal Register, and implies that the subsequent
withdrawal of that approval was unfair or improper. We
cannot take up this question because the Board does not
have supervisory authority over examining attorneys; the
only question we may properly answer is whether a mark is
registrable, which we do here. If applicant believed the
action of the examining attorney was improper, it could
have raised that issue by way of a petition to the Director

8 We do not mean to imply that registration of these third-party
marks was in error. We have not examined these registrations for
Serial No. 76623748
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of the Patent and Trademark Office. See Trademark Rule
2.146(a)(3). But applicant did not do so, and we must
decide the question at hand.
V. Conclusion
After careful consideration of the evidence of record
and of the entire file, we conclude that applicant’s mark
is deceptive under Trademark Act § 2(a), and that
registration is accordingly barred.
Decision: The refusal to register is affirmed.

that purpose because even if they are deceptive, that fact would
not give applicant the right to register another deceptive mark.