Fieldcrest Cannon Licensing, Inc.

Trademark Trial and Appeal Board

Apr 3, 2001

No. 75858392 (T.T.A.B. Apr. 3, 2001)

04/03/01
Paper No. 9
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fieldcrest Cannon Licensing, Inc.
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Serial No. 75/858,392
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Charles E. Baxley of Hart, Baxley, Daniels & Holton for
Fieldcrest Cannon Licensing, Inc.
Susan C. Hayash, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
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Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Fieldcrest Cannon Licensing, Inc. has filed an
application to register the mark shown below
for the following goods, as amended: “pillows, cushions,
featherbeds and bumperguards for furniture” in
International Class 20; and “towels and toweling, table
cloths not of paper, placemats and cloth napkins,
decorative and drapery fabrics, bathroom shower curtains,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/858392
2
bathroom hand and face towels and material for same,
textile fabrics of cotton, wool, rayon and synthetic
materials and mixtures of the same, fabric toilet seat
covers, washcloths, household utility cloths, pot holders,
bedding namely blankets, bed sheets and sheeting, pillow
cases, cloth pillow protectors, mattress pads, mattress
covers, dust ruffles, duvet covers, bedspreads, coverlets
and throws, comforters, drapes, curtains and fabric
valences” in International Class 24.1
In the first Office action the Examining Attorney
required, inter alia, that applicant enter a disclaimer of
the descriptive wording “classic casuals,” indicating that
a properly worded disclaimer should read as follows: “No
claim is made to the exclusive right to use CLASSIC CASUALS
apart from the mark as shown.” Applicant responded to this
requirement as follows: “No claim is made to the exclusive
right to use CLASSIC apart from the mark as shown. No
claim is made to the exclusive right to use CASUALS apart
from the mark as shown”; and “Applicant has disclaimed
words ‘CLASSIC’ and ‘CASUALS’ apart from the mark as shown.
Applicant reserves to itself any common-law rights it may
1 Application Serial No. 75/858,392, filed November 26, 1999,
alleging dates of first use and first use in commerce of April 1,
1999.
Ser. No. 75/858392
3
have in CLASSIC, CASUALS, and/or CLASSIC CASUALS as well as
Applicant’s right to the mark in its entirety.”
Registration was then finally refused under Sections
2(e)(1) and 6(a) of the Trademark Act, 15 U.S.C.
§§1052(e)(1) and 1056(a), on the basis of applicant’s
failure to comply with a requirement to disclaim the
unitary wording “CLASSIC CASUALS,” rather than the
individual elements CLASSIC and CASUALS. It is from this
requirement that applicant has appealed.
Both applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
As applicant has stated in its brief, it has
disclaimed the word CLASSIC and the word CASUALS separately
and individually. (Brief, pp. 2-3.) However, it is well
established that disclaimers of individual components of
complete descriptive phrases are improper. See In re
Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992);
and In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm. 1988).
[For a general discussion of unitary marks, and a brief
history of disclaimers, see Dena Corp. v. Belvedere
International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed.
Cir. 1991).] Thus, the only issue before us is whether or
not CLASSIC CASUALS, as used in applicant’s mark,
Ser. No. 75/858392
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constitutes a unitary phrase which must be disclaimed in
its entirety.
The Examining Attorney has submitted excerpts from the
Nexis database and from the Internet showing that the
phrase “classic casual” is used to refer to a type of
housewares, linens, interior design and furniture. See,
for example, the following (emphasis added):
Headline: The new niche builders; bed
ensembles from Albrizio Designs; Ann
Gish
...SG Designs has successfully pulled
together classic casual and formal
design elements for a contemporary line
of decorative pillows. “HFN The Weekly
Newspaper for the Home Furnishing
Network,” August 5, 1996;
Headline: Great Street a casual retreat
...Natural-finish hardwood floors,
white walls, and green plants give the
room a classic casual look. “Chicago
Tribune,” May 29, 1992;
Perhaps the most classic casual linen
design of all is the Gingham check.
Artex-int.com; and
Silhouette Shades Get New Casual
Fabrics... Its slubbed appearance
provides a classic casual look for any
room. Custom decorators, Oregon City,
Oregon.
Further, applicant’s own specimens state, “Welcome to
Cannon Classic Casuals, where cozy softness meets carefree
style.” (Emphasis in original.)
Ser. No. 75/858392
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Both applicant and the Examining Attorney referenced
dictionary definitions of the words “classic” and “casual”
in their briefs on appeal. The Board hereby takes judicial
notice of said dictionary definitions. See TBMP §712.01.
Based on the record before us, when the two words
CLASSIC and CASUALS are combined in applicant’s mark and
used on the identified goods (various home furnishings such
as pillows, towels, textiles, bedding, and drapes), it is
clear that the phrase CLASSIC CASUALS is merely descriptive
of applicant’s goods, in that this phrase directly conveys
information about these goods, namely, that the goods are
of a specific type of décor known as “classic casual.”
Applicant’s argument that “CLASSIC” refers to an image
of high class, fine quality while “CASUAL” refers to
carelessness or indifference; and that therefore, CLASSIC
CASUALS conjures up a totally contradictory combination is
simply not persuasive of a different result. The evidence
submitted by the Examining Attorney establishes a prima
facie showing that there is a type of decorative design
known as “classic casual.”
Decision: The refusal of registration in the absence
of applicant’s compliance with the requirement under
Section 6 for a disclaimer of the unitary phrase ‘CLASSIC
CASUALS’ is affirmed. However, this decision will be set
Ser. No. 75/858392
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aside and the mark published for opposition if applicant,
no later than thirty days from the mailing date hereof,
submits an appropriate disclaimer of ‘CLASSIC CASUALS’.
See Trademark Rule 2.142(g).