Dean S. Carlson

Trademark Trial and Appeal Board

Jun 9, 2009

No. 78752616 (T.T.A.B. Jun. 9, 2009)

Hearing: Mailed:
April 21, 2009 June 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dean S. Carlson
________

Serial No. 78752616
_______

Stephen R. Baird and Sharon D. Armstrong of Winthrop &
Weinstine, P.A. for Dean S. Carlson

Amy C. Kean, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney)
_______

Before Seeherman, Hairston and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Dean S. Carlson has appealed from the final refusal of
the trademark examining attorney to register URBANHOUZING
in standard character format for “real estate brokerage;
real estate consultation; and real estate listing.”1 There
are two issues before us in this appeal: whether

1 Application Serial No. 78752616, filed November 11, 2005,
based on Section 1(a) of the Trademark Act, and asserting first
use and first use in commerce as early as February 2005.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 78752616
2
applicant’s mark is merely descriptive of his identified
services (refusal based on Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1)); and whether applicant’s
disclaimer of the term URBAN HOUSING is acceptable, or
whether it constitutes an impermissible disclaimer of the
entire mark.
The appeal has been fully briefed, and applicant and
the examining attorney appeared at an oral hearing.2
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d

2 In his briefs applicant has not provided the case cites to
United States Patent Quarterly for the federal court cases he has
cited. “When cases are cited in a brief, the case citation
should include a citation to The United States Patent Quarterly
(USPQ), if the case has appeared in that publication.” TBMP
§ 801.03 (2d ed., revised 2004).
With his reply brief applicant submitted pages from the
guidelines for listings in “urban dictionary,”
www.urbandictionary.com, the source of the definition of the
phrase “in da hizza houze” submitted by the examining attorney.
Applicant’s submission is untimely and would normally not be
considered. If applicant had wished to raise questions about the
probative value of the examining attorney’s evidence from this
source he should have submitted the guidelines during the course
of prosecution. (Although the dictionary definition was made of
record by the examining attorney with the final Office action,
applicant could have submitted the additional webpages with a
request for reconsideration.) However, at oral argument the
examining attorney stated that she had no objection to this
material, and therefore we have treated it as being of record.
Ser No. 78752616
3
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 to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
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 is being used on or in
connection with the 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). In other words, the 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 immediately understand the mark as directly conveying
information about them. In re Tower Tech Inc., 64 USPQ2d
1314, 1317 (TTAB 2002).
Ser No. 78752616
4
We need not reiterate the evidence that the examining
attorney has made of record to show that the term “urban
housing” is merely descriptive for applicant’s services.
Applicant has essentially admitted this by his offer of a
disclaimer of “urban housing.” That is, applicant has
recognized that “urban housing” is a descriptive term and
that he is not entitled to exclusive rights to it.
“Applicant has made clear and the owners of the [previously
cited] application and registration have made clear that
none seek exclusive rights in the descriptive phrase URBAN
HOUSING.” Response filed June 7, 2007. However, it is
applicant’s position that the manner in which his mark is
spelled, with the letter “Z” substituted for the letter “S”
in housing and the compressing of the two words, URBAN
HOUSING, into the single word URBANHOUZING, transforms the
descriptive term “urban housing” into an inherently
distinctive mark.
We find, first, that the compression of the words
URBAN HOUSING into a single term, URBANHOUZING, still
conveys the commercial impression of two words. In other
words, consumers would recognize the mark as consisting of
the separate elements URBAN and HOUZING. See In re Cox
Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL
is simply a compressed version of the descriptive term THE
Ser No. 78752616
5
ATL without a space between the two words. Without the
space, THEATL is equivalent in sound, meaning and
impression to THE ATL and is equally descriptive of
applicant's goods”); In re Planalytics Inc., 70 USPQ2d
1453 (TTAB 2004) (GASBUYER merely descriptive of providing
on-line risk management services in the field of pricing
and purchasing decisions for natural gas; the absence of
the space does not create a different meaning or perception
of the term). The Planalytics decision, 70 USPQ2d at 1455-
56, also cited the following cases in which, although a
space was deleted between the words, the combined term
remained descriptive:
In re Gould Paper Corp., 834 F.2d 1017,
5 USPQ2d 1110 (Fed. Cir. 1987)
(SCREENWIPE generic for a wipe for
cleaning television and computer
screens); In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978)
(GASBADGE at least descriptive for gas
monitoring badges; three judges
concurred in finding that term was the
name of the goods); In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED descriptive for jams and
jellies that would be a spread for
bread); In re Perkin-Elmer Corp., 174
USPQ 57 (TTAB 1972) (LASERGAGE merely
descriptive for interferometers
utilizing lasers).

The next question is whether the misspelling of the
descriptive word HOUSING as HOUZING changes the meaning or
commercial impression of the mark. In general, a mere
Ser No. 78752616
6
misspelling of a word is not sufficient to change a merely
descriptive term into an inherently distinctive trademark.
See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305
U.S. 315 (1938) (NU-ENAMEL; NU found equivalent of “new”);
In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505,
507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is
no legally significant difference here between ‘quik’ and
‘quick’”); In re Organik Technologies Inc., 41 USPQ2d 1690,
1694 (TTAB 1997) (“ORGANIK, which is the phonetic
equivalent of the term ‘organic,’ is deceptive”); and
Hi-Shear Corp. v. National Automotive Parts Association,
152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE “is the phonetic
equivalent of the words ‘HIGH TORQUE’”).
In In re Bayer Aktiengesellschaft, 488 F.2d 960, 82
USPQ2d 1828 (Fed. Cir. 2007), the Court found that ASPIRINA
was merely descriptive for analgesic goods, and affirmed
the Board’s finding that ASPIRINA and aspirin are
sufficiently close in appearance, sound, and meaning that
“[t]he mere addition of the letter ‘A’ at the end of the
generic term ‘aspirin’ is simply insufficient to transform
ASPIRINA into an inherently distinctive mark for
analgesics.” 82 USPQ2d at 1831. In that case, the Court
held that “[a]dding an ‘a’ to aspirin results in virtually
no distinction with respect to the visual impressions of
Ser No. 78752616
7
the terms,” and that the meaning of the terms was similar.
82 USPQ2d at 1832. In the present case, the terms are, if
anything, even more similar, because they are also
phonetically identical. The dictionary definition for the
word “housing” shows it is pronounced “hou’zĭng.”3
In determining whether the misspelling of HOUSING in
applicant’s mark URBANHOUZING makes the mark inherently
distinctive, we must consider whether URBANHOUZING will be
perceived as the equivalent of URBANHOUSING and, as a
secondary point, whether, as applicant argues, the element
ZING makes a separate commercial impression. First, we
find that HOUZING will be recognized as a misspelling of
the descriptive word HOUSING. It is, as we have stated, a
phonetic equivalent. Further, the examining attorney has
submitted excerpts from blogs/message boards and from a
slang dictionary in which what is obviously meant to be the
word “housing” is spelled “houzing.” See, for example, a
listing of topics, such as Minerals, English Study,
Computer, in which “Houzing” is listed as a category, with
“Housing in Urbana,” “Urbana yellow page” and “Room listing
in Urbana” as subtopics/links. https://netfiles.uiuc.edu.

3 The American Heritage Dictionary of the English Language, 4th
ed. © 2000, made of record with Office action mailed May 18,
2006.

Ser No. 78752616
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See also a comment in an Internet forum that “he was in
Newark at a houzing project.” http://www.hondahookup.com.
We do not mean to suggest that listings in blogs or even a
slang dictionary4 show that “houzing” is an accepted
alternate spelling of “housing” or that this spelling is in
common and widespread use. But these uses indicate either
that “housing” may be misspelled as “houzing” or that the
writers who deliberately use this spelling view “houzing”
as a misspelling or alternate spelling that readers will
immediately understand as “housing.”
Perhaps most importantly, applicant himself uses
“HOUZING” as an alternate version of “housing” in general
statements separate and apart from his proposed trademark.
On his website he makes such statements as “ALL YOUR
HOUZING NEEDS FROM A TO ZING”; “THE TWIN CITIES ULTIMATE
URBAN HOUZING LIFESTYLE RESOURCE”; and “Consumer demand for
a lifestyle of convenience has revitalized the Urban
Houzing Market.” http://urbanhouzing.com.
The next question we must consider is whether the ZING
portion of applicant’s mark creates a separate commercial
impression, such that the mark as a whole has a double
entendre, with one meaning that is not merely descriptive.

4 As noted in footnote 2, the “urban dictionary,”
www.urbandictionary.com, has a listing for “in da hizza houze.”
Ser No. 78752616
9
Applicant argues that because “zing” means “a quality or
characteristic that excites the interest, enthusiasm, etc.”
and “to move or proceed with speed or vitality; zip,” “the
mark suggests that Applicant’s real estate brokerage,
consulting and listing services are provided with speed and
enthusiasm.” Brief, p. 15. Applicant has cited In re
Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB
1994) and Surfvivor Media, Inc. v. Survivor Productions,
406 F.3d 625, 74 USPQ2d 1621 (9th Cir. 2005), in support of
his position. The latter decision, however, is
distinguishable from the present situation for many
reasons. Most importantly, there was never an issue as to
whether the plaintiff’s mark, SURFVIVOR, was descriptive of
such beach-themed products as sunscreen and t-shirts. The
comments the Court made with respect to the mark were
limited to the issue of the strength of the mark in terms
of an infringement action, specifically whether the mark as
a coined word was fanciful and entitled to the highest
degree of trademark protection, or suggestive and worthy of
a lesser scope of protection. In Grand Metropolitan
Foodservice, the Board found that applicant’s mark
was not merely descriptive of muffins
because it would not be perceived as
just a misspelling of a descriptive or generic word, but as
Ser No. 78752616
10
having a dual meaning of “fun” as well as of “muffins.”
We consider this case to be distinguishable from the
present situation as well, since the way the mark is
depicted the word “fun” is emphasized as a separate word by
the use of the capital “F.” The “Z” in applicant’s mark,
because it is not emphasized and would be perceived as only
a misspelling of the descriptive word “housing”, does not
project the impression of the separate word “zing.”
Applicant has argued that we must look to his
specimens to determine whether the ZING portion of his mark
will make a separate commercial impression. Applicant
cites In re Hershey, 6 USPQ2d 1470 (TTAB 1988), for that
proposition. However, Hershey involved a refusal under
Section 2(a) on the ground that the mark was scandalous.
Moreover, the Board did not rely on the specimens in
finding that the mark was not scandalous. The Board stated
only that the specimens provided further support for its
view that the mark did not have an offensive meaning, the
Board having found that the evidence submitted by the
examining attorney to be “at best marginal to demonstrate
that the mark is a vulgar, slang reference to male
genitalia and would be recognized as such a reference by a
substantial composite of the general public.” Id. at 1471.
Ser No. 78752616
11
Applicant has pointed to no cases in which the courts
or this Board have looked to an applicant’s specimens to
find that a mark was not merely descriptive5. On the
contrary, the cases we have reviewed are directly contrary
to applicant’s position.6 For example, in In re The Place
Inc., 76 USPQ2d 1467 (TTAB 2005), applicant sought to
register THE GREATEST BAR for restaurant and bar services,
arguing that the mark was not merely descriptive because it
had a double entendre in that the theme and decor of the
restaurant would focus on the greatest people, places and
events in Boston history. The Board rejected this
argument, stating:
A mark thus is deemed to be a double
entendre only if both meanings are
readily apparent from the mark itself.
If the alleged second meaning of the
mark is apparent to purchasers only
after they view the mark in the context
of the applicant's trade dress,
advertising materials or other matter
separate from the mark itself, then the
mark is not a double entendre.

5 Of course, specimens and promotional material may be used to
prove that a mark is merely descriptive, and statements made in
them can show that a term describes a feature or characteristic
of the goods or services. See, for example, In re Abcor
Development Co., supra; In re Hunter Fan Co., 78 USPQ2d 1474
(TTAB 2006).
6 Even in Grand Metropolitan Foodservice, the Board found the
mark per se projected a double meaning; the promotional materials
emphasizing this meaning merely supported the Board’s finding
based on the mark alone.
Ser No. 78752616
12
Id. at 1470 (emphasis in original). The Board then
reiterated: “A mark is not a double entendre if the second
meaning is grasped by purchasers only when the mark is used
with ‘other indicia,’ even if that other indicia is itself
not merely descriptive.” Id. at 1471.
Similarly, in In re Wells Fargo & Company, 231 USPQ 95
(TTAB 1986), applicant argued that its mark EXPRESSERVICE
was not merely descriptive of banking services because of a
double entendre, “the historical connotation with
applicant's predecessor which was extensively involved in
the Old West.” Id. at 99. However, the Board found that
“consumers associate ‘Express Service’ with this Old West
imagery only when the term is used in association with the
Wells Fargo name or with one of its allied marks (e.g., the
stagecoach design).” Id. The applicant in that case had
an argument very similar to applicant’s position herein:
In its reply brief, applicant contends
by way of rebuttal that we are obliged
to consider the issue before us in
relation to the context of its use of
EXPRESSERVICE, citing In re Tennis in
the Round, Inc., 199 USPQ 196 (TTAB
1978), and that that context includes
the name Wells Fargo and the depiction
of a stagecoach in an Old West setting.
Thus, appellant argues that, in the
context of its use (i.e., in close
association with the name Wells Fargo
and the depiction of a stagecoach), as
well as the continuing references to
the word “express” in connection with
Ser No. 78752616
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Wells Fargo's historical foundation,
EXPRESSERVICE is bound to convey the
Old West imagery, thereby supporting
the proposition that appellant's mark
is suggestive rather then merely
descriptive.

Id. at 100.

The Board rejected this argument:
Appellant misconstrues Tennis in the
Round. The only purpose of the
reference to the specimen brochures in
that case was to show that applicant's
tennis courts were normal rectangular
tennis courts rather than round ones
(albeit, the entire facility had a
circular configuration), thereby
confirming that the services did not
literally involve playing a game of
tennis in a round tennis court. The
well established rule that
descriptiveness issues must be analyzed
in relation to the context of use does
not and cannot, obviously, mean that
descriptiveness of the term sought to
be registered must be evaluated as if
that term were used in association with
other nondescriptive indicia. In re
Nash-Finch Co., 160 USPQ 210 (TTAB
1968) [“The question is not whether the
subject matter in association with
other trademarks is capable of
distinguishing applicant's goods but
whether it is capable of distinguishing
applicant's goods without reference to
other indicia.”]….

Thus, applicant’s argument that it is appropriate to
look to his specimens to find that his mark has a double
entendre must be rejected.
Ser No. 78752616
14
We conclude that applicant’s applied-for mark,
URBANHOUZING in standard character form, will be
immediately and directly perceived by consumers as the
equivalent of the admittedly descriptive term URBAN
HOUSING, rather than as including the separate word ZING.
The mark, thus, does not convey a double entendre that
would prevent it from being merely descriptive of
applicant’s services.
In reaching our conclusion that applicant’s mark is
merely descriptive, we have considered applicant’s argument
that “the Board employs three tests to determine whether a
mark is suggestive rather than descriptive: (1) the
“competitors’ need test,” (2) the “competitors’ use test,”
and (3) the degree of imagination test.” Brief, p. 17.
Applicant bases this argument on No Nonsense Fashions Inc.
v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985).
However, these “tests” were set out in an inter partes case
in a discussion of whether use of a term by third parties
on their packaging detracted from the plaintiff’s trademark
rights. Thus, to the extent that applicant is suggesting
that the Office must prove all three points, applicant is
incorrect. Since this decision issued in 1985, there have
been numerous decisions from the Court of Appeals for the
Federal Circuit and the Board making clear that the test
Ser No. 78752616
15
for descriptiveness is whether a term “immediately conveys
knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831,
citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009
(Fed. Cir. 1987). Further, with respect to applicant’s
statement that “the Examiner has also failed to show that
any competitor has used, or will ever have need to use, the
terms URBANHOUZING or HOUZING in connection with real
estate services,” brief, pp. 5-6, the test for
descriptiveness is set out in the preceding sentence.
There is no requirement that the Office prove actual
competitor use or need; it is well established that even if
an applicant is the only user of a merely descriptive term,
this does not justify registration of that term. See In re
BetaBattInc., 89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun
Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re
Acuson, 225 USPQ 790, 792 (TTAB 1985). In any event,
applicant’s arguments with respect to the lack of evidence
of third-party use of URBANHOUZING or HOUZING for real
estate services, or of dictionary definitions for those
terms, goes to the particular spelling of HOUZING with a
“Z.” We have already discussed why the misspelling of the
Ser No. 78752616
16
merely descriptive term “urban housing” does not make
applicant’s mark registrable.
In view of our finding that URBANHOUZING in standard
character format is merely descriptive of applicant’s
identified services, the second issue before us in this
appeal, whether applicant’s disclaimer of “urban housing”
is appropriate, is moot. However, in order to render a
complete opinion, we will address this issue, assuming,
arguendo, that applicant’s mark is not merely descriptive
but is registrable. Such an assumption involves viewing
applicant’s mark as having a double entendre based on the
misspelling of his mark to create the word ZING. In such a
circumstance, the disclaimer of “urban housing” would not
constitute a disclaimer of the entire mark, since the
“ZING” portion and meaning of the mark creates a
registrable element. Further, the disclaimer of the words
“urban housing,” spelled correctly, is the appropriate form
of the disclaimer, since applicant is not claiming
exclusive rights to use those words; he is claiming
exclusive rights to use URBANHOUZING with the letter “Z.”
Accordingly, if applicant’s mark were to be found
inherently distinctive, the disclaimer submitted by
applicant of the words “urban housing” is acceptable, and
Ser No. 78752616
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the examining attorney’s refusal to accept this disclaimer
is reversed.
Decision: The refusal on the ground that applicant’s
mark is merely descriptive of his identified services is
affirmed.