Garfield & Marks Designs, Ltd.

Trademark Trial and Appeal Board

Mar 26, 2003

No. 76247488 (T.T.A.B. Mar. 26, 2003)

Mailed: March 26, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Garfield & Marks Designs, Ltd.
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Serial No. 76/247,488
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Mark D. Godler of Kaye Scholer LLP for Garfield & Marks
Designs, Ltd.
Gene V. J. Maciol, Trademark Examining Attorney, Law Office
109 (Ronald Sussman, Managing Attorney).
_______
Before Cissel, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Garfield & Marks Designs, Ltd. has applied to register
WOMYN as a trademark for “women’s clothing, namely,
hosiery, socks, stockings, jackets, blazers, coats,
rainwear, sweaters, pants, jeans, vests, dresses, skirts,
blouses, t-shirts, sleepwear, shoes, sandals, boots,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/247,488
2
footwear, hats, belts, headbands and scarves” in
International class 25.1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that the mark is merely
descriptive of applicant’s goods. When the refusal was
made final, applicant appealed. Both applicant and the
Examining Attorney have filed briefs. No oral hearing was
requested.
It is the Examining Attorney’s position that
applicant’s mark WOMYN is the phonetic equivalent of the
word “women,” and as such, merely identifies the end user
or class of purchasers of applicant’s goods. Thus, the
Examining Attorney maintains that “women” is merely
descriptive of applicant’s goods. The Examining Attorney
submitted excerpts from The American Heritage Dictionary of
the English Language (1992) to show that when the letter
“y” is located within a word, it is not uncommon for it be
pronounced as the phonetic sound “î” which is the same
sound as the letter “e” in the word “women.”2
1 Serial No. 76/347,488, filed April 27, 2001, and asserting
first use and first use in commerce on August 1, 2000.
2 Specifically, the Examining Attorney submitted dictionary
entries for the words “rhythm,” “acronym,” “lynx,” “symbol,”
“lytic,” “byssus,” and “phlyctena.” In addition, the Examining
attorney submitted an entry from the same dictionary of the word
“woman” and the plural “women.”
Ser No. 76/247,488
3
Applicant argues primarily that its mark creates a
commercial impression that is different from the word
“women” and that it is not merely descriptive. According
to applicant, WOMYN is an “alternate” term intended to
raise awareness of culturally ingrained gender bias and
inequality. Further, applicant’s counsel states that
applicant has spent approximately $75,000 advertising and
promoting its goods and that the WOMYN mark has attained a
“unique position in the public sphere as evidenced by the
“51,600 ‘hits’ of WOMYN” when a search was performed on the
Internet. In its response to the Examining Attorney’s
first office action, applicant listed several third-party
registrations for marks that include the words “woman” or
“women” or a foreign equivalent thereof.3
We agree with the Examining Attorney that the mark
WOMYN is merely descriptive of applicant’s goods, and
accordingly affirm the refusal to register the mark under
Section 2(e)(1) of the Trademark Act.
3 Although applicant stated that copies of the third-party
registrations accompanied its response, they are not in the file
of this case. We note that the Examining Attorney did not inform
applicant that the registrations were missing until his brief on
the case. Thus, while a mere listing of third-party
registrations generally does not make the registrations of
record, in this case, applicant did not have an opportunity to
submit substitute copies of the third-party registrations. Thus,
we will consider the list of registrations.
Ser No. 76/247,488
4
It is well settled that a term is merely descriptive
if it serves merely to identify a class of users to which
the goods or services are directed. International Ass’n.
of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940
(TTAB 1985) [FIRE CHIEF held generic for magazine targeted
to fire chiefs and other senior fire fighting officials];
In re Camel Manufacturing Co., 222 USPQ 1031 (TTAB
1984)[MOUNTAIN CAMPER held merely descriptive of retail and
mail order services in the field of outdoor equipment and
apparel]; see also Yankee, Inc. v. Geiger, 216 USPQ 996
(TTAB 1982) [FARMER’S ALMANAC held generic for an almanac
published primarily for the benefit of farmers]; In re
Gentex Corp., 151 USPQ 435 (TTAB 1966)[PARADER held merely
descriptive of helmet liners sold for use by persons who
parade, e.g., members of a band or drill team].
We have no hesitation in finding that the word “women”
is merely descriptive of applicant’s goods since the goods
are for use by women. Indeed, applicant has identified its
goods as “women’s clothing.” The only question then is
whether the mark WOMYN is likewise merely descriptive of
women’s clothing items. We find that prospective
purchasers would recognize “womyn” as a slight misspelling
of the word “women.” The Supreme Court, in Standard Paint
Ser No. 76/247,488
5
Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 455 (1911),
held that:
The word, therefore is descriptive, not indicative
of the origin or ownership of the goods; and being
of that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled.
Bad orthography has not yet become so rare or so
easily detected as to make a word the arbitrary
sign of something else than its conventional
meaning . . .
Other cases have recognized that a slight misspelling
does not change a merely descriptive term into a suggestive
term. See Armstrong Paint & Varnish Works v. Nu-Enamel
Corp., 305 U.S. 315 (1938) [NU-ENAMEL; NU held 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 between ‘quik’
and ‘quick’”]; 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’”]; and
In re Organik Technologies Inc., 41 USPQ2d 1690 (TTAB
1997)[ORGANIK is the phonetic equivalent of “organic”].
In this case, applicant’s mark merely substitutes the
letter “y” for the letter “e.” As shown by the Examining
Attorney’s evidence, the letter “y” could easily be
pronounced the same as the letter “e” in women.
Ser No. 76/247,488
6
We are not persuaded by applicant’s argument that its
mark will be perceived by purchasers as an “alternate”
term, and thus it is not merely descriptive of applicant’s
goods. Applicant’s mark is not so inventive that
purchasers would understand it to mean something other than
“women.” Compare In re Grand Metropolitan Foodservice
Inc., 30 USPQ2d 1974 (TTAB 1994)[“MufFuns” in stylized
script “does project a dual meaning of suggestiveness---
that of muffins and of the ‘fun’ aspect of applicant’s food
product.”]. The fact that a search of the Internet reveals
many hits for WOMYN is not evidence of consumer perception.
In addition, although applicant argues that its mark has
attained a unique position among purchasers, applicant did
not amend its application to seek registration under the
provisions of Section 2(f).
Finally, the third-party registrations are of limited
value. As often noted by the Board, each case must be
decided on its own merits. We are not privy to the records
in the files of the cited registrations and, moreover, the
determination of registrability of particular marks by the
Trademark Examining Groups cannot control the result in
another case involving a different mark for different
goods. In re Nett Designs, Inc., 263 F.3d 1379, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). [“Even if some prior
Ser No. 76/247,488
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registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”].
Decision: The refusal to register under Section
2(e)(1) is affirmed.