Hookah Portable Enterprises, Inc.

Trademark Trial and Appeal Board

Mar 27, 2015

No. 85829768 (T.T.A.B. Mar. 27, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hookah Portable Enterprises, Inc.
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Serial No. 85829768
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Matthew H. Swyers of The Trademark Company,
for Hookah Portable Enterprises, Inc.
Jessica Powers Ludeman, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Taylor, Bergsman and Masiello,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Hookah Portable Enterprises, Inc. (“Applicant”) seeks registration on the
Principal Register of the stylized mark HOOKAH PORTABLE (shown below)

for “electronic hookahs; hookahs” in International Class 34.1 The word HOOKAH
was disclaimed voluntarily in the original application.

1 Application Serial No. 85829768 was filed on January 23, 2013, based upon Applicant’s
allegation of first use of the mark anywhere and in commerce on October 15, 2012. The
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The Trademark Examining Attorney finally refused registration on the ground
that HOOKAH PORTABLE is merely descriptive of electronic hookahs and hookahs
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
Applicant appealed to this Board, and both Applicant and the Examining
Attorney filed briefs. We affirm.
Applicable Law
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations
omitted). See also In re Oppedahl & 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) (“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 mark.”).2 The determination of whether a mark is merely descriptive

application includes the following statements: “The mark consists of the word HOOKAH in
a large stylized cursive font. Below the word HOOKAH is the word PORTABLE in smaller
non-cursive font. Color is not claimed as a feature of the mark.”
2 Applicant, citing to No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 USPQ
502 (TTAB 1985), additionally points to, and has extensively argued with regard to, a three-
part test for determining whether a mark is suggestive rather than descriptive. The test
includes: (1) the degree of imagination necessary to understand the product; (2) a
competitor’s need to use the same term; and (3) the competitor’s current use of the same or
similar terms. Br. p. 12, 4 TTABVue 13. We note, however, that this “test” was set out in an
inter partes case in a discussion of whether the use of a term by third parties on their
packaging detracted from the plaintiff’s trademark rights. Since this decision issued in
1985, there have been numerous decisions from the Court of Appeals for the Federal
Serial No. 85829768
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must be made in relation to the goods or services for which registration is sought.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. The question is not
whether someone presented only with the mark could guess the products listed in
the description of goods. Rather, the question is whether someone who knows what
the goods are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
It is not necessary, in order to find a mark merely descriptive, that the mark
describe each feature of the goods or services, only that it describe a single,
significant ingredient, quality, characteristic, function, feature, purpose or use of
the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re
Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon

Circuit, our primary reviewing court, and from the Board making clear that the test 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.” Chamber of
Commerce of the U.S, 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.2d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007), citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). We base our decision herein on the test for
descriptiveness set forth in the post 1985 decisions and have considered Applicant’s
arguments within those parameters.
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Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a unique, suggestive, or otherwise nondescriptive meaning, or if the
composite has a bizarre or incongruous meaning as applied to the goods or services,
see In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re
Shutts, 217 USPQ 363 (TTAB 1983), However, if each component retains its merely
descriptive significance in relation to the goods, the combination results in a
composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at
1371.
Last, as Applicant correctly points out, a mark comprising more than one
element must be considered as a whole and should not be dissected; however, as the
Examining Attorney aptly notes, we may consider the significance of each element
separately in the course of evaluating the mark as a whole. See DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd. 103 USPQ2d at 1756-57 (reversing the Board’s
denial of cancellation for for medical devices as not merely descriptive, but
noting that “[t]he Board to be sure, can ascertain the meaning and weight of each of
the components that makes up the mark”).
Arguments and Evidence
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Applicant, while conceding that the word “hookah” in its mark HOOKAH
PORTABLE is generic,3 maintains that its mark, as a whole, is suggestive of the
identified goods, and that “the ‘mental link’ between the mark HOOKAH
PORTABLE and Applicant’s electronic hookahs and hookahs is neither immediate
nor instantaneous.” Br. p. 11.4
The Examining Attorney conversely maintains that Applicant’s mark is merely
descriptive of the identified electronic hookahs and hookahs because it conveys an
immediate idea of a characteristic of the goods (i.e., hookahs that are easy to move),
that the individual terms in the mark are descriptive and, in combined form, do not
create an incongruous or nondescriptive meaning. In support of her position, the
Examining Attorney points to Applicant’s concession that the word HOOKAH is
generic. She also has made the following evidence of record:
1. Definitions
Hookah is defined as:
an oriental tobacco pipe with a long, flexible tube that
draws the smoke through water contained in a bowl5
Portable is defined as:

3 Br. p. 12. 4 TTABVue 13. Applicant also voluntarily disclaimed the term “Hookah” in its
brief. As previously noted, Applicant’s original application included a disclaimer of
“Hookah.” The second disclaimer was unnecessary.
4 4 TTABVue 12.
5 The New Oxford American Dictionary 813 (2d. ed. 2005). We grant the request in the
Examining Attorney’s brief and take judicial notice of this definition. The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions. In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85829768
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Carried or moved with ease6
Capable of being carried or moved about7
2. Wikipedia Entry
The Examining Attorney made of record a Wikipedia entry for the term
“Hookah” to demonstrate that a hookah is normally a large single- or multi-
stemmed instrument for vaporizing and smoking flavored tobacco in which the
vapor or smoke is passed through a water basin (often glass-based) before
inhalation.8
3. Internet evidence
a. The Examining Attorney made of record with her first Office action, copies of
web pages from the websites of Hookah & Shisha Central, Amazon and Portable
Hookahs, all showing that the term “portable” is commonly used in connection with
hookahs to refer to hookahs that capable of and easy to transport.9 Excerpts from
these webpages include, for example:
Portable Hookahs
Some genius in the past few years combined the concept
of the hookah and the Big Gulp and created this little
beauty: The Leila Portable Hookah. This hand-held
hookah can literally fit in your cup holder …
…

6 American Heritage Dictionary of the English Language, 5th ed. (2011), retrieved at
http.www.ahdictionary.com/word/search.html?q=portable. Attachment to Office Action
dated May 12, 2013.
7 Merriam-Webster’s Online Dictionary
8 Attachments to the final Office action dated November 9, 2013. On pages 45 and 46 of
the attachments, the substantial size of the devices can be seen.
9 Attachments to the Office Action dated May 12, 2013.
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Not every hookah can fit in your cup holder, but some are
easier to transport than others.
…
Our most recently added product line is possibly the best
option for all of your portable hookah needs. They go by
many names” E-cigarette, portable hookah pen, portable
electronic hookah, or pocket hookah – but we just prefer
E-Hookah.10
The Amazon site offers for sale, for example, a “Premium Portable Hookah and
50 gram Beamer Ultra Premium Hookah molasses!,” a “Crystal Shaped Super Mini
portable tobacco Hookah pipe” and a “1 Hose Portable Pocket Hookah Design
AY03.”11
The home page of Portable Hookahs lists in the Menu section “Portable
Hookahs” and additional web pages feature various portable hookahs, including, for
example:
a. Car Genie which is described as “the most advanced
portable hookah available to date”;
b. Mya Bambino which is described as “Small and
Portable”;
c. Mya Petite which is described as the “Ultimate in
portability”;
d. Mya QT which is described as “Portable and Easy to
Clean”; and
e. Road Warrior Chrome which “can be used as a portable
hookah for walks, hikes and sightseeing.”12

10 http://www.hookah-shisha.com/hookahlove/13291-portable-hookas.html.
11 http://amazon.com/Premium-Portable-Hookah-Beamer-molasses/dp/B002N2JI3S.
12 http://portablehookahs.com/products-page/.
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b. The Examining Attorney attached to the final Office action copies of
webpages from the websites of eBay, Hookey, Hookah & Shisha Central, and Texas
Hookah, all demonstrating through a large number of products for sale on each site
that “portable” hookahs are small devices designed to be used on the go. In
particular, eBay and Hookah & Shisha Central each use “portable hookahs” as a
category of goods.
Discussion
We find the Examining Attorney’s evidence highly persuasive. We note, first,
with regard to the term “hookah,” that Applicant’s goods are identified as hookahs
and also that Applicant, in its brief, conceded that the term “hookah” is generic and
offered (for the second time) a disclaimer of the term. In that regard, it has long
been held that the disclaimer of a term constitutes an admission of the merely
descriptive nature of the term, as applied to the goods and services with which it is
used, and an acknowledgment of the lack of an exclusive right therein at the time of
the disclaimer. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d
1296, 172 USPQ 361, 363 (CCPA 1972) (when appellant disclaimed the term in
applications for registrations of compound marks, it admitted the merely descriptive
nature of the mark). See also, In re Interco Inc., 29 USPQ2d 2037, 2038 (TTAB
1993). Further, the dictionary definition and Wikipedia entry confirm Applicant’s
concession of genericness. We accordingly find that the term “hookah” identifies the
recited goods.
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Notwithstanding the concession and voluntary disclaimer, Applicant made of
record copies of eight third-party registrations for marks that include the term
HOOKAH (or variations thereof), arguing that it would be inconsistent for the
Office to deny registration of its mark by concluding that the term HOOKAH is
merely descriptive of the Applicant’s goods where the marks in these registrations
have been permitted to register on the Principal Register without disclaimers of
that term.13 These registrations do not persuade us, however, to come to a different
conclusion, nor do they obviate Applicant’s concession. In those registrations, the
term “hookah” is accompanied by additional arbitrary matter, is an element of a
unitary design or phrase, and/or is used in connection with goods and services other
than “hookahs.” Moreover, and more importantly, in determining the issue of
descriptiveness, prior registrations are of little value because each case must be

13 These registrations include:
Registration No. 3009252 for the mark HOOKAH TROPICAL FLAVORS (the word
“Flavors” disclaimed) for cigars; Registration No. 3749069 for the mark HOOKAHOLIC for
hookahs; Registration No. 4332774 for the mark for electronic cigarettes;
Registration No. 4396066 for the mark THE HOOK A UP for electronic cigarettes,
electronic cigarette refill cartridges sold empty and hookah parts, namely, hose adaptors;
Registration No. 4108736 for the mark for bar, café and cocktail lounge services;
Registration No. 2836353 for the mark (the word “Lounge” disclaimed) for
restaurant, carryout and catering services; and Registration No. 3657212 for the mark
for café-restaurants.
Registration No. 3445884 (cancelled) for the mark HOOKAFINA for flavored tobacco for
hookah pipes is only evidence that the registration once existed.
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determined on its own facts. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics
similar to Nett Designs’ application, the PTO’s allowance of such prior registrations
does not bind the Board or this court”).
As regards the term “portable,” the dictionary definition and the Internet
evidence demonstrate that the term describes an attribute or characteristic of
Applicant’s hookahs, namely that they are capable of being moved about. Applicant
states that there are several definitions of the term portable, such as, “capable of
being used on different computer systems,” “able to be endured,” “bearable,” or
“capable of being transported” and, thus, no instant association to Applicant’s good
will be made.14 However, as noted previously, descriptiveness is determined in
relation to the goods sought to be registered. See In re Bright-Crest, supra. Here, the
record clearly demonstrates the descriptive significance of “portable” in relation to
certain hookahs, namely, that they are movable.
In view of the evidence submitted by the Examining Attorney, we find that the
individual terms “Hookah” and “Portable” have descriptive significance as used in
connection with the identified goods. No hesitation or thought is needed in
appreciating the meaning of these two terms.
Next, we must determine whether the combination of these two descriptive
terms is still descriptive, or whether it creates a term that evokes a new and unique
commercial impression. As previously stated, if, when the mark is considered as a

14 Br. p. 14, 4 TTABVue15.
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whole, the merely descriptive components retain their merely descriptive
significance in relation to the goods, then the resulting combination is also merely
descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1372; In re Tower
Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely descriptive
of commercial and industrial cooling towers).
Here, we find that the record establishes that the phrase HOOKAH PORTABLE,
as a whole, is descriptive of the identified goods. When HOOKAH PORTABLE is
viewed in connection with the goods listed in the application, there is nothing in the
designation which is incongruous, nor is there anything which would require the
gathering of further information in order for the merely descriptive significance
thereof to be readily apparent to prospective purchasers of the goods. See, e.g., In re
Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA) (Rich, J.,
concurring) [GASBADGE described as a shortening of the name “gas monitoring
badge”]; Cummins Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149
USPQ 559 (CCPA 1966) [TURBODIESEL held generically descriptive of engines
having exhaust driven turbine super-chargers]. Viewing the mark as a whole, we
find that the combination of the individual terms “Hookah” and “Portable” results in
a term which is not unique, incongruous or otherwise nondescriptive, but rather
provides more complete information about a characteristic of Applicant’s hookahs
than each word alone.
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Indeed, Applicant’s website bolsters our finding that the phrase HOOKAH
PORTABLE merely describes the mobile characteristic of Applicant’s hookahs, and
specifically states (emphasis in original):
Hookah Portable is offering you a new product, a new
idea, and a revolutionary advance in science that is
destined to change the way people hookah forever. …
Hookah Portable provides the best hookah experience for
people on the go as well. You can take your portable
hookah practically anywhere, everywhere and anyplace
your heart desires!15
In urging reversal of the refusal, Applicant argues:
There[ ] would be a stronger association with what the
goods may be insofar as one hears PORTABLE HOOKAH
they would naturally think of [a] hookah that is portable.
That is not the case if the terms are transposed.
Moreover, if they are transposed and highly stylized.
In the instant case, because of the stylization of the mark
in conjunction with the transposition of the terms some
degree of imagination is required to associate the terms
HOOKAH PORTABLE with the Applicant’s goods.16
We disagree and find that the stylization of the lettering in which HOOKAH
appears does not create a separate and inherently distinctive commercial
impression apart from the word itself. Accordingly, it does not obviate the
descriptive significance of the term. See, e.g., In re Cordua Rests. LP, 110 USPQ2d
1227 (TTAB 2014) (the stylization of found insufficient to create an
inherently distinctive impression apart from the term itself); In re Sadoru Group

15 http://hookahportable.com/about-hp/?, attachment to the Final Office Action dated
November 9, 2013.
16 Br. p. 13, 4 TTABVue14.
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Ltd., 105 USPQ2d 1484 (TTAB 2012) (the stylization of found
insufficient to create an inherently distinctive impression apart from the term
itself). We similarly find that the transposition of the terms “Hookah” and
“Portable” does not add anything that would change the commercial impression of
the individual terms or create any type of incongruity. See, e.g., In re Away
Chemical Corp., 217 USPQ 275 (TTAB 1982) (The transposition of “tablets for pans”
to “pan-tablets” failed to overcome the “descriptive cast” of the mark
CONDENSATE DRAIN PAN-TABLETS); In re Vasco Metals Corp., 154 USPQ 191
(TTAB 1967) (the Board noted that the mere transposition of words is generally
insufficient to create trademark rights in an otherwise recognizable common
descriptive term). Indeed, Applicant points to and we discern no alternate meaning
resulting from the reversal of terms. Instead, as displayed in the applied-for mark,
the term “Portable” appears in smaller lettering, a less stylized font and below the
term “Hookah,” such that it appears to modify an aspect of the more visually
prominent term “Hookah.”
Applicant’s contention that it is the only user of the term likewise is unavailing.
The fact that an applicant may be the first and only user of a merely descriptive or
generic designation does not justify registration if the only significance conveyed by
the term is merely descriptive. See In re Nat’l Shooting Sports Found., Inc., 219
USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW
AND CONFERENCE held descriptive for conducting and arranging trade shows in
the hunting, shooting, and outdoor sports products field).
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Applicant also relies on numerous cases to bolster its contention that its applied-
for mark is not merely descriptive of the identified goods. This reliance is misplaced.
As noted, each case must be decided on its own merits. The determination of
registrability of a mark in another case does not control the merits in the case now
before us. See In re Nett Designs Inc., 51 USPQ2d at 1566; see also, In re Kent-
Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); In re Wilson, 57 USPQ2d 1863
(TTAB 2001). In this case, the evidence clearly demonstrates that Applicant’s
applied-for mark HOOKAH PORTABLE is merely descriptive of the identified
goods.
Finally, we note Applicant’s reliance on the principle that when there is doubt on
the issue of whether a mark is merely descriptive, that doubt should be resolved in
favor of the applicant. In the present case, we have no doubt that Applicant’s mark
is merely descriptive.
After careful consideration of all of the evidence and arguments presented, we
conclude that when applied to Applicant’s goods, the designation HOOKAH
PORTABLE, as a whole, immediately describes, without any kind of multi-step
reasoning, a characteristic of the identified goods, namely that Applicant’s
electronic hookahs and hookahs are capable of being carried or, stated another way,
that they are portable.
Decision: The refusal to register HOOKAH PORTABLE under Section 2(e)(1) is
affirmed.