Guntersville Breathables, Inc.

Trademark Trial and Appeal Board

Nov 7, 2006

No. 76565906 (T.T.A.B. Nov. 7, 2006)

Mailed:
7 November 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Guntersville Breathables, Inc.
________

Serial No. 76565906
_______

Larry W. Brantley of Waddey & Patterson, P.C. for
Guntersville Breathables, Inc.

Jason F. Turner, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Grendel, Drost and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 8, 2003, Guntersville Breathables, Inc.
(applicant) filed an application to register the mark
CHILLY PAD, in standard character form, on the Principal
Register for “evaporative cooling pads” in Class 28.1 The
examining attorney refused to register applicant’s mark on

1 Serial No. 76565906. The application alleges dates of first
use and first use in commerce of December 3, 2003.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76565906
2
the ground that the mark was merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). In addition, the examining attorney required
applicant to amend its identification of goods to indicate
that the goods function as towels and that they are
classified in Class 24.
The examining attorney argues:
The applicant’s proposed mark, “CHILLY PAD” consists
of the term “PAD” being modified by the term “CHILLY.”
The applicant’s submitted definition of “pad” is “a
piece of soft material that is used to absorb
moisture.” “Chill” is defined as “to make cool
especially without freezing.” “Chilly” is defined as
“noticeably cold.” Taken as a whole, the proposed
mark can therefore be interpreted as a “noticeably
cold piece of soft material which absorbs moisture.”
The examining attorney contends that this is merely
descriptive of the identified goods, “evaporative
cooling pads.” The use of the term “pad” in both the
mark and the identification evidences the descriptive
nature of that particular term.

Brief at unnumbered p. 5 (footnote and citation to record
omitted).
Regarding the identification of goods, the examining
attorney points out that applicant’s towels are not used
only by sports participants, but they are “also for
‘landscapers,’ ‘construction workers’ and ‘manufacturing
workers.’ Most significantly, however, ‘towels’ appear to
be classified in Class 24, even when used in a specific
sport. For example, ‘golf towels’ are classified in Class
Ser. No. 76565906
3
24 and not 28 with other golf items.” Brief at unnumbered
p. 14. The examining attorney suggests that the phrase
“for use as towels” be added to the identification of
goods. Brief at unnumbered p. 13.
Applicant argues that the “consumer must exercise some
thought in order to determine what qualities or
characteristics of the goods are being described by the
mark CHILLY PAD. The mark is an obvious play on the word
‘lily pad.’ ‘Chilly’ sounds like ‘lily’ and ‘pad’ is the
same in both cases.” Brief at 10. Applicant maintains
that this is a double entendre and, therefore, the mark is
not merely descriptive.
Regarding the identification of goods, applicant
argues that its “flyer further shows the goods to be a thin
cushion like mass of soft material. The evidence indicates
that the goods are pads rather than towels. Thus, the
associated goods are sporting articles. In addition, the
associated goods do not appear to be included in any of the
other International Classes.” Reply Brief at 6.
After the examining attorney made the refusals final,
applicant filed a notice of appeal.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
Ser. No. 76565906
4
mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
“Such qualities or properties include color, odor,
function, dimensions, or ingredients.” In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987) (internal
quotation marks omitted). Descriptiveness of a mark is not
considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978).
The examining attorney relies on several dictionary
definitions, submitted during the prosecution of the
application, to support his refusal.
Chilly – Cool or cold enough to cause shivering

Pad – a piece of usually folded absorbent material (as
gauze) used as a surgical dressing or protective
covering.

The American Heritage Dictionary of the English
Language (3d ed. 1992).
Chilly – noticeably cold

Chill – to become cold

Merriam-Webster OnLine Dictionary

Applicant has submitted a definition of “pad” as “a
piece of soft material that is used to absorb moisture.”
Ser. No. 76565906
5
See Response dated January 31, 2005, p. 21
(http://encarta.msn.com).
The examining attorney also submitted evidence from
the LEXIS/NEXIS database.
Wilson took to wrapping a towel soaked in chilly water
around his head.
Journal-News (Westchester County, NY), July 4, 2002.

Injections into the back can reduce inflammation and
also provide pain relief. Electrical stimulation as
well as heating and cooling pads are also used.
Arkansas Democrat-Gazette, October 26, 2003.

A cooling pad “Perfect For Dogs That Are Always Hot
And Panting” is at thepamperedpetmart.com.
New York Times, October 16, 2003.

Customers are treated to a foot soak, heated neck wrap
and cooling eye pads…
Des Moines Register, October 7, 2003.

Then after a long night of partying or whatever,
saturate two pads with the chilled chamomile water…
Orange County Register, January 3, 2005.

DuWop I Gels offers three sets of gel-filled eye pads
that can be chilled to soothe dark circles…
Detroit Free Press, December 19, 2003.

Rays fans will be able to buy chemically chilled pads
to cool them off.
Sarasota Herald-Tribune, December 30, 2000.

In addition, the examining attorney points to
statements that are included on applicant’s literature.
This literature refers to:
- Chilly Pad Sports Towel

- When wet, the towel becomes considerably cooler than
the outside air.
Ser. No. 76565906
6

- When it stops cooling (between 1-4 hours depending
on conditions) you simply re-wet the towel in hot or
cold water

The literature also identifies potential users of the
goods to include: golfers, team sports participants and
spectators, fishing enthusiasts, runners, landscapers,
construction workers and manufacturing workers.
Furthermore, the goods are “made from a new hyper-
evaporative material that retains water while remaining dry
to the touch.”
When we consider this evidence, we agree with the
examining attorney that the terms “Chilly” and “Pad”
describe applicant’s goods. First, regarding the term
“pad,” applicant has described its goods as “evaporative
cooling pads.” Inasmuch as applicant’s definition of a pad
is a “piece of soft material that is used to absorb
moisture,” the term “pad” describes applicant’s goods that
are made of soft, absorbent material that “retains water.”
Next, we look at the term “chilly.” This term is
related to the word “chill.” Chilly means “noticeably
cold” while chill means “to become cold.” Applicant’s
literature indicates that its goods, when wet, become
“noticeably cooler than the outside air” and “[w]hen it
stops cooling… you simply re-wet the towel in hot or cold
Ser. No. 76565906
7
water and wring it out. Within minutes it is cool again.”
The LEXIS/NEXIS articles similarly refer to soaking a towel
“in chilly water” and “pads with the chilled chamomile
water” as well as sports fans being able to buy “chemically
chilled pads to cool them off.” Furthermore, there are
pads used for “cooling” humans and even pets. In effect,
applicant’s pad or towel, when wet, becomes “cool” or
“chilly.” Therefore, the term “chilly” merely describes
the goods.
However, the question is not whether the terms
individually are descriptive of the goods or services. We
must consider whether the mark in its entirety is merely
descriptive of the goods. P.D. Beckwith, Inc., 252 U.S. at
545-46. Merely because the individual words may describe a
product, when the terms are combined, they may be more than
merely descriptive. See, e.g., In re Colonial Stores
Incorporated, 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968)
(footnote omitted):
We are cognizant of the usual practice of selling
baked goods in stores which also sell sugar and spices
as individual commodities. As appellant concedes, the
terms “sugar” and “spice” used individually are well
known and well understood by the purchasing public.
However, when combined and used on bakery goods, we
think they may function as an indication of more than
a mere description of the ingredients of the goods on
which the mark is used and, on the record made below,
are not “merely descriptive” of such goods within the
meaning of section 2. On the record below, the mark
Ser. No. 76565906
8
clearly does not tell the potential purchaser only
what the goods are, their function, their
characteristics or their use, or, of prime concern
here, their ingredients.

The immediate impression evoked by the mark may well
be to stimulate an association of “sugar and spice”
with “everything nice.” As such, on the record below,
the mark, along with the favorable suggestion which it
may evoke, seems to us clearly to function in the
trademark sense and not as a term merely descriptive
of goods. To the extent that the nursery rhyme is
familiar to one seeing or hearing the mark, his recall
is undoubtedly stimulated to make the association with
“everything nice” but this in no way defeats the
distinctive nature of the composite word mark as
applied to the listed products.

When the terms “Chilly” and “Pad” are combined into
the mark CHILLY PAD, they would describe a pad or towel
that is chilled or chilly and, therefore, the combined term
would also be descriptive. Indeed, applicant appears to
admit that the term has a descriptive meaning. See
Response dated January 31, 2005, p. 16 (“The proposed mark
has two meanings to consumers when it is used in connection
with the identified foods… One of these meanings, ‘cold
pad,’ is arguably descriptive of the evaporative cooling
pads”).
However, applicant argues that its mark has a second
meaning of “lily pad” and this creates a double entendre
that shows that the mark is not merely descriptive.
Applicant relies on the fact that its CHILLY PAD mark is
used in association with its mark FROGG TOGGS and its
Ser. No. 76565906
9
specimen (but not its literature) shows “a drawing of a
frog footprint.” Brief at 11.
We have several problems with applicant’s double
entendre argument. First, even if we consider the
specimens, it is not at all clear that, when consumers view
applicant’s goods, they would make the association between
frogs and lily pads even when the specimen contains an
image of frogs. To do so, they would have to dissect the
word “chilly” and understand that part of the word “chilly”
is similar in sound to the word “lily” and then associate
the term “lily” with the word “frogg” and the picture of
the frog. It simply does not seem that this meaning would
be understood by a significant numbers of consumers.
Second and even more significantly, applicant’s
argument must fail because we do not consider how the mark
is displayed to determine if the mark creates a double
entendre.
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.

In re The Place Inc., 76 USPQ2d 1467, 1470 (TTAB 2005).
Ser. No. 76565906
10
Applicant is not seeking to register the trade dress
or the mark FROGG TOGGS CHILLY PAD. Furthermore, the
context and the packaging that applicant uses with its mark
can change at any time. Therefore, we conclude that
applicant’s mark does not create a double entendre that
overcomes the descriptiveness of the mark CHILLY PAD.
We add that even if no competitor is using the term
CHILLY PAD for its goods, this fact, by itself, does not
“alter the basic descriptive significance of the term.”
In re Gould, 173 USPQ 243, 245 (TTAB 1972).2
Therefore, we affirm the examining attorney’s
descriptiveness refusal.
Regarding the identification of goods, we note that
Congress has authorized the Director to set up a
classification system of goods and services for the
convenience of the Office. 15 U.S.C. § 1112.
Classification does not limit or extend an applicant’s or
registrant’s rights. Id. Along with being properly
classified, the goods or services must also be properly
identified. “The identification of goods or services must

2 Applicant refers to a search of the Internet and describes how
the search could be duplicated (Brief at 12 n.43). However, a
“mere reference to a website does not make the information of
record.” In re Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB
2004).
Ser. No. 76565906
11
be specific, definite, clear, accurate and concise.” TMEP
§ 1402.01 (4th ed. rev. April 2005).
Here, applicant has identified its goods as
“evaporative cooling pads” in Class 28. The examining
attorney has objected to this identification of goods
inasmuch as the examining attorney determined that the
goods are properly classified in Class 24 and the
identification of goods is not sufficiently definite. The
examining attorney has suggested that the phrase “for use
as towels” be added to the identification of goods.
Applicant argues that the “flyer further shows the goods to
be a thin cushion like mass of soft material. The evidence
indicates that the goods are pads rather than towels.”
Reply Brief at 6.
We agree with the examining attorney that the term
“evaporative cooling pads” is indefinite. “As a general
rule, the specimen(s) in an application under § 1 of the
Trademark Act helps to determine the correct
classification.” TMEP § 1401.06. The examining attorney
has pointed out that pads are classified in numerous
classes depending on the type of pad and that towels made
of fabric are classified in Class 24. Specifically, even
golf towels are classified in Class 24. In this case, when
we look at applicant’s specimen and literature, it is clear
Ser. No. 76565906
12
that applicant’s goods are properly classified in Class 24
and they are for use as towels. Applicant’s specimen and
literature describes its goods as follows:
If the towel starts to dry out, re-wet with cold or
warm water.

Wring towel out for reuse when using it to dry off.

Use it to dry off or use it to cool down.

When wet the towel becomes considerably cooler than
the outside air, thereby providing cooling relief to
the user.

When it stops cooling (between 1-4 hours depending on
conditions), you simply re-wet the towel in hot or
cold water and wring it out.

Applicant’s literature depicts people wearing the item
as a towel on the person’s head or neck.
Furthermore, applicant itself commonly describes its
goods as “towels.” In addition, like a towel, applicant’s
goods according to its specimen, can be used “to dry off.”3
Therefore, the phrase “for use as towels” accurately
describes the goods for searching and classification
purposes.
In addition, the classification of goods in Class 24
is appropriate. Towels of all types including golf towels
are classified in that class. Even if sports towels were

3 This specimen contradicts applicant’s argument that “there is
no evidence that the goods are used either to wipe or dry.”
Brief at 16.
Ser. No. 76565906
13
classified in Class 28, applicant’s literature specifically
indicates that its goods are not simply a sports towel.
Among the potential users that applicant identifies for its
goods are sports spectators, landscapers, construction
workers, and manufacturing workers. We conclude that
applicant’s goods are properly classified in Class 24 and
that the identification of goods is indefinite without
additional language such as “for use as towels.”
Decision: The examining attorney’s refusals to
register on the grounds that the mark is merely descriptive
and the identification of goods is indefinite are affirmed.