Cortina N.V.

Trademark Trial and Appeal Board

Jul 1, 2008

No. 79019306 (T.T.A.B. Jul. 1, 2008)

Mailed:
July 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cortina N.V.
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Serial No. 79019306
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James C. Wray for Cortina N.V.

Elizabeth N. Kajubi, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
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Before Walters, Walsh and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Cortina N.V., applicant herein, seeks registration on
the Principal Register of the mark shown below for goods
ultimately identified as “clothing, namely, work shoes and
boots, and headwear” in International Class 251:

1 Serial No. 79019306, filed on November 23, 2005, based on
Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79019306
2
The trademark examining attorney issued a final
refusal to register applicant’s mark on the ground that the
mark is merely descriptive of the identified services.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Applicant has appealed the final refusal. After careful
consideration of the evidence of record and the arguments
of counsel, we reverse the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A term need not immediately convey an idea of
each and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
Ser. No. 79019306
3
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the
other hand, if a mark requires imagination, thought, and
perception to arrive at the qualities or characteristics of
the goods or services, then the mark is suggestive. In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003).
We consider a composite mark in its entirety. The
composite is registrable if as a unitary mark it has a
separate, non-descriptive meaning. In re Colonial Stores,
Ser. No. 79019306
4
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR
& SPICE not merely descriptive of bakery products). Thus
we consider whether the words “SAFETY JOGGERS” have a
descriptive meaning as a unitary phrase. The examining
attorney submitted various dictionary definitions of the
word “safety,” with the relevant meaning as “a device
designed to prevent accidents.”2 The examining attorney
also submitted evidence of Internet advertisements for
sneakers and athletic shoes referred to variously as
“joggers.” Accordingly, the examining attorney claims that
the “logical and apparent meaning” of the term SAFETY
JOGGERS is “that applicant’s goods involve a sneaker shoe
that creates a freedom from injury.”
In fact, both applicant and the examining attorney
submitted evidence from the applicant’s own webpage
describing shoes applicant currently sells called the
“Safety Jogger.” Applicant’s website describes its “Safety
Jogger” shoes as “high performance safety shoes,” with
apparent safety features such as “steel toe cap” and “anti-
perforation steel sole.” The website also touts “extreme
comfort anatomic insole” and “breathable leather uppers.”
It is not immediately apparent whether the SAFETY
JOGGERS mark that applicant seeks to register is meant to

2 American Heritage Dictionary (4th ed.).
Ser. No. 79019306
5
cover its current “Safety Jogger” shoes since the mark is
plural and the shoe name is not. In either case, we turn
to the actual identification of goods here to determine
whether the mark is “merely descriptive.”
To that end, we note that the evidence submitted by
the examining attorney regarding third-party use of the
term “jogger” correlates to athletic shoes such as
sneakers. However, applicant is not trying to register its
mark for athletic shoes. The final recital of goods
specifically limits footwear to “work shoes and boots.”
There is no evidence in the record that the term “SAFETY
JOGGERS” would convey an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of “work shoes and boots.”3
Rather, it requires imagination, thought, and
perception to determine how SAFETY JOGGERS relates to “work
shoes and boots.” In re MBNA America Bank N.A., 67 USPQ2d
1778. Applicant’s “SAFETY JOGGERS” mark suggests that
applicant’s “work shoes and boots” feature the comfort and
agility of athletic shoes. Furthermore, we note that
unlike a 2(d) analysis, any doubts regarding the

3 Since we base our reversal of the refusal to register on the
specific identification of the goods at issue here, we need not
consider whether SAFETY JOGGERS as a composite phrase would be
merely descriptive of other types of footwear.

Ser. No. 79019306
6
application of 2(e)(1) are to be resolved in favor of the
applicant. In re Conductive Services, Inc., 220 USPQ 84,
86 (TTAB 1983) (observing, “[w]e recognize that the
suggestive/descriptive dichotomy can require the drawing of
fine lines and often involves a good measure of subjective
judgment.”). With that in mind, we find the mark to be
suggestive, rather than merely descriptive. Accordingly,
we reverse the refusal to register.

Decision: We reverse the refusal to register under 2(e)(1).