JMH Productions, Inc.

Trademark Trial and Appeal Board

Aug 25, 2006

No. 76608812 (T.T.A.B. Aug. 25, 2006)

Oral Hearing held: Decision mailed:
May 23, 2006 August 25, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JMH Productions, Inc.
________

Serial No. 76608812
_______

Donald L. Dennison of Dennison, Schultz, Dougherty & Macdonald
for JMH Productions, Inc.

Linda M. Estrada, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Hohein, Bucher and Walsh, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

JMH Productions, Inc. has filed an application to
register the mark "MISS NUDE CENTERFOLD SEARCH" on the Principal
Register in standard character form for "pre-recorded videotapes,
CD-ROMS, and DVDS featuring adult entertainment" in International
Class 9 and "entertainment services, namely, a television series
featuring adult entertainment" in International Class 41.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the

1 Ser. No. 76608812, filed on August 26, 2004, based upon an allegation
of a bona fide intention to use such mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76608812
2
ground that, when used in connection with applicant's goods and
services, the mark "MISS NUDE CENTERFOLD SEARCH" is merely
descriptive of them.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We reverse the refusal to register.
It is well settled that a mark is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a mark describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the mark
describes a significant attribute or idea about them. Moreover,
whether a mark 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 or
is intended to be used on or in connection with those goods or
services and the possible significance that the mark would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
Ser. No. 76608812
3
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
Applicant, noting in its brief the Examining Attorney's
reliance upon (i) dictionary definitions, which she made of
record, of the individual words comprising its mark to support
her argument that the mark is merely descriptive of the subject
matter and purpose of, respectively, applicant's goods and
services because "the goods feature the search for a nude female
centerfold" while the services involve "a search for Miss Nude
Centerfold" and (ii) excerpts, which she also made of record, of
articles and webpages from a search of the Internet for the
Ser. No. 76608812
4
purpose of showing that "the wording in the proposed mark is
commonly used in connection with services of the type identified
in this application," asserts that (footnote omitted; bold in
original):2
In its response to the Final Refusal,
Applicant made of record thirty-one separate
registration[s] or allowed applications of
marks owned by third parties that included
the wording "MISS (or MS.) NUDE" combined
with other words, generally geographic or
place names.

These citations were submitted to show
the recognition by the USPTO that marks such
as MISS NUDE KENTUCKY (with a disclaimer of
"nude and Kentucky") are registrable.

The Examining Attorney's actions in this
case are clearly opposite to the well
established history of Miss Nude marks in the
USPTO by a large number of Examining
Attorneys. ....

Applicant, in light thereof, further argues that "[t]he
position taken by this Examining Attorney is clearly inconsistent
with the prior and present practice before this Office in
connection with similar trade marks" inasmuch as "[t]he sheer
number of third[-]party registrations of record here containing
'MISS NUDE ...' demonstrates that consumers and the general

2 The Examining Attorney, citing Trademark Rule 2.142(d), has objected
in her brief to applicant's reference in its brief to what it asserts
are its pending applications for the marks "MS NUDE CARNIVAL RIO" and
"MS NUDE CARNIVALE." Inasmuch as the Examining Attorney is correct
that such applications "were not properly made of record by applicant
prior to the appeal" since the mere mention thereto in a list or other
reference thereto is insufficient to make such applications part of
record because the Board does not take judicial notice of applications
which have been filed in the U.S. Patent and Trademark Office, the
objection is sustained. No further consideration, therefore, will be
given to applicant's claimed pending applications. See Trademark Rule
2.142(d) and, e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).

Ser. No. 76608812
5
public view these marks as an indication of origin of goods and
pageants rather than as a descriptive phrase." Moreover, and in
any event, applicant contends that "[a]s stated in In re Calspan
Tech. Prods., Inc.[,] 197 USPQ 647 (TTAB 1977), a combination of
words in a mark, each of which may be descriptive in their own
right, may result in a mark which is not in fact descriptive."
Any doubts concerning whether a mark is merely descriptive or,
instead, is at a minimum suggestive "are to be resolved in favor
of the Applicant during a ex parte prosecution," applicant
insists, citing In re LRC Products Ltd., 223 USPQ 1250, 1252
(TTAB 1984) and In re Micro Instrument Corp., 222 USPQ 252, 255
(TTAB 1984).3
The Examining Attorney, on the other hand, asserts that
the mark "MISS NUDE CENTERFOLD SEARCH" "is merely descriptive of
the subject matter and purpose of the identified goods and
services" based upon "evidence consisting of dictionary
definitions and Internet evidence showing use of the wording by
third parties for similar goods/services." In particular, she
notes that the record contains the following definitions from The
American Heritage Dictionary of the English Language (3rd ed.
1992) of the words which comprise applicant's mark:
"miss," which is defined as a noun
meaning "1. Miss. Used as a courtesy title
before the surname or full name of a girl or
single woman. .... 2. Used as a form of
polite address for a girl or young woman: I
beg your pardon, miss. 3. A young unmarried

3 See also In re Conductive Systems, Inc., 220 USPQ 84, 86 (TTAB 1983);
In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); and In
re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).

Ser. No. 76608812
6
woman. 4. Miss. Used as a prefix to the
name of that which a usually young woman is
held to represent: She's Miss Personality.";

"nude," which is listed as an adjective
meaning "1. Being without clothing; naked.";

"centerfold," which is set forth as a
noun connoting "1. A magazine center spread,
especially a foldout of an oversize
photograph or feature. 2. a. The subject of
a photograph used as a centerfold, often a
nude model. b. A feature, such as an
advertisement or calendar, inserted as a
centerfold."; and

"search," which is defined as a noun as
signifying "1. An act of searching."

She further notes that "[a]dditional dictionary evidence from
www.inforplease.com ... indicates that the term 'search' is also
defined as [a verb to mean] 'to uncover or find by exploration or
examination[:] to search out all the facts'" and, we observe, is
similarly defined as meaning "to explore or examine in order to
discover. They searched the hills for gold."
In consequence of the above definitions, the Examining
Attorney maintains that she has not improperly dissected
applicant's mark. Rather, citing In re Tower Tech Inc., 64
USPQ2d 1314, (TTAB 2002), she insists that while applicant is
correct that "[a] mark that combines descriptive terms may be
registrable if the composite creates a unitary mark with a
separate, nondescriptive meaning," it is also the case, however,
that "if each component retains its descriptive significance in
relation to the goods or services, the combination results in a
composite that is itself descriptive." She thus contends that:
In this case, the composite mark
immediately conveys a great deal of
Ser. No. 76608812
7
information to consumers about the
applicant's goods and services. The
information conveyed is that MISS NUDE
CENTERFOLD SEARCH (i.e. a hunt for a woman or
women to pose naked for centerfold pictures)
is the exact subject matter of the pre-
recorded videotapes, CD-ROMS, and DVDS
featuring adult entertainment and the subject
matter and purpose of the entertainment
services, namely a television series
featuring adult entertainment. The Board has
previously found that a proposed mark that
describes the subject matter of a television
program is merely descriptive of the program.
In re Weather Channel, Inc. 229 USPQ 854
(TTAB 1986). In the Weather Channel case,
the Board held WEATHER CHANNEL ... merely
descriptive of a television program.

In addition, the Examining argues that "the Internet
evidence of record indicates that consumers would associate the
proposed mark with the subject matter and purpose of the goods
and services rather than with the source of the goods and
services." Such evidence, the Examining Attorney maintains,
"indicates that the wording 'Miss Nude' and 'Centerfold Search'
is commonly used in connection with adult entertainment." In
particular, the Examining Attorney points to "the following
examples of use of the wording in the proposed mark in
applicant's industry:" (i) "evidence from www.realitytvlinks.com
stating 'Playboy Centerfold Search--search the net for centerfold
content'"; (ii) "evidence from www.pageant.com entitled 'A Modest
Peak At An Immodest Pageant' and stating, 'The Miss Nude Georgia
Pageant is held in Atlanta, the city that is famous for its
'girlie' nightclubs and unclothed exhibitions'"; (iii) "evidence
from www.esweepstakes.com simply advertising a 'Miss Nude
Contest'"; and (iv) "evidence from www.hooziergassette.com
Ser. No. 76608812
8
entitled 'Roselawn Hosts Annual Nudes-A-Poppin Festival' and
stating that 'the festival celebrates the nudist lifestyle and
features several contests [which] include the Miss Nude Galaxy
Club Beauty Pageant, Mr. Nude Galaxy, Miss Nude Showstopper, Miss
Nude Rising Star and Mr. Nude Go-Go.'"
Also, while not mentioned in her brief, the Examining
Attorney made of record evidence from the desmoinesregister.com
website, consisting of an article headlined "The naked truth:
D.M. to host Miss Nude World competition," which states in
relevant part that:
Des Moines lost the state FFA convention
this year, but the city has grabbed the Miss
Nude World pageant--landing the contest that
had been held in Atlanta and Miami in recent
years.
....
The pageant's home will be the Lumber
Yard, a strip club located just north of the
Des Moines city limits not far from U.S.
Highway 69.
The Lumber Yard has been developing a
national reputation among aficionados of the
birthday-suit form of entertainment, and the
Miss Nude World pageant is expected to boost
that reputation. ....
....
To be eligible for the Miss Nude World
pageant, contestants must have won a previous
nude beauty contest .... Competitors will
include the winner and runner-up from the
first Miss Nude Iowa contest, which was held
at the Lumber Yard earlier this month.
....
The Miss Nude World pageant has been
featured in recent years on the Ricki Lake
talk show and the HBO program "Real Sex" ....
A Florida Company, Fine Grove Films and No
Strings Attached Films, is a major national
sponsor of the world contest .... The
company films the contests and later sells
copies.

Ser. No. 76608812
9
Likewise, while not referred to in her brief, she additionally
made of record several stories from the "NEXIS" database to show
that, as indicated in the final refusal, "the wording 'centerfold
search' is commonly used to describe contests and searches for
centerfold models" and "the wording 'Miss Nude' is commonly used
to identify contests [which] search for a contestant to be named
Miss Nude." For example, a story in the St. Louis Post-Dispatch
refers to "P.T.'s Showclub executive director Jamil Akman, back
in our town after opening a club in Las Vegas, is .... putting on
another Akman classic production, 'The Future Centerfold Search,'
to be held each Wednesday in November at the Sauget-based strip
club," while a story from the Salon.com website mentions that
"dancers are advised to enter as many beauty pageants as
possible, especially those whose names begin with the words 'Miss
Nude.'" In view thereof, the Examining Attorney insists that
"[s]ince MISS NUDE and CENTERFOLD SEARCH have been clearly shown
to be widely used within the adult entertainment industry, there
is a clear competitive need for these terms" and that "there is
no doubt that the proposed mark is merely descriptive of the
goods and services in this case" (italics in original).
As to applicant's reliance on third-party registrations
to support its contentions that its mark is suggestive and that
the Examining Attorney has acted inconsistently herein because
the USPTO has previously allowed registration of similar marks on
the Principal Register, the Examining Attorney insists that:
The examining attorney does not dispute
that the Office has previously registered
other marks featuring the wording MISS NUDE
Ser. No. 76608812
10
on the Principal Register for similar
services and owned by third parties.
However, the examining attorney respectfully
submits that third-party registrations are
not conclusive on the question of [mere]
descriptiveness. Each case must be
considered on its own merits. A proposed
mark that is merely descriptive does not
become registrable simply because other
similar marks appear on the register. In re
Scholastic Testing Service, Inc., 196 USPQ
517 (TTAB 1977); TMEP §1209.03(a). In that
case, the Board held SCHOLASTIC ... merely
descriptive of devising, scoring and
validating tests for others although
applicant's evidence included third[-]party
registrations comprising or including
SCHOLASTIC for various products. In
addressing this issue, the Board stated,
"[i]n a final analysis, we are not so much
concerned with what has been registered, but
rather what should or should not be
registered. Scholastic Testing, at 519.

With respect to the evidentiary value of third-party
registrations, the Board in the recent case of In re First Draft
Inc., 76 USPQ2d 1183, 1187 (TTAB 2005), noted that "[t]here can
be no doubt that 'the Board ... must assess each mark on the
record of public perception submitted with the application,'"
quoting from In re Nett Designs Inc., 236 F.3d 1139, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).4 As set forth in the latter case,

4 Nett Designs affirmed the Board's finding that the term "ULTIMATE,"
as used in the mark "LOAD LLAMA THE ULTIMATE BIKE RACK" and design
which was sought to be registered on the Principal Register for, inter
alia, "carrying racks for mounting on bicycles," was merely
descriptive thereof and hence was properly required to be disclaimed.
The court, on the basis of dictionary definitions and advertising
literature for such goods, held that "substantial evidence supports
the Board's finding that consumers will immediately regard THE
ULTIMATE BIKE RACK as a laudatory descriptive phrase that touts the
superiority of Nett Designs' bike racks" and that, while "[t]he record
in this case contains many prior registrations of marks including the
term ULTIMATE," "[t]hese prior registrations do not conclusively rebut
the Board's finding that ULTIMATE is descriptive in the context of
this mark." In re Nett Designs Inc., 236 F.3d 1139, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
Ser. No. 76608812
11
our principal reviewing court observed that "[t]he perception of
the relevant purchasing public sets the standard for determining
descriptiveness," citing In re Bed & Breakfast Registry, 791 F.2d
157, 229 USPQ 818, 819 (Fed. Cir. 1986), while adding that:
In the complex world of etymology,
connotation, syntax, and meaning, a term may
possess elements of suggestiveness and
descriptiveness at the same time. No clean
boundaries separate these legal categories.
Rather, a term may slide along the continuum
between suggestiveness and descriptiveness
depending on usage, context, and other
factors that affect the relevant public's
perception of the term.

Nett Designs, supra at 57 USPQ2d 1566. Although ultimately
concluding, in view thereof, that "[t]he Board must decide each
case on its own merits" and that, as to the evidentiary value of
third-party registrations, "[e]ven if some prior registrations
had some characteristics similar to [applicant's] application,
the ... allowance of such prior registrations does not bind the
Board or this court," the court added that, "[n]eedless to say,
this court encourages the [US]PTO to achieve a uniform standard
for assessing registrability of marks." Id. Therefore, even
though the submission of copies of third-party registrations may
not be said to establish a binding USPTO practice, it remains the
case that such registrations may in general be given some weight
to show the meaning of a mark in the same way that dictionary
definitions would be so used. See, e.g., Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976).
When the third-party registrations made of record
herein are so viewed, along with the dictionary definitions,
Ser. No. 76608812
12
"NEXIS" stories and Internet evidence offered by the Examining
Attorney, we agree with the Examining Attorney to the extent
that, in the context of applicant's "pre-recorded videotapes, CD-
ROMS, and DVDS featuring adult entertainment" and its
"entertainment services, namely, a television series featuring
adult entertainment," the terms "NUDE," "CENTERFOLD" and "SEARCH"
are indeed merely descriptive of the subject matter of such goods
and services. Moreover, when combined to form the phrase, "NUDE
CENTERFOLD SEARCH," such terms readily retain their merely
descriptive significance; no separate, nondescriptive meaning is
created by the combination thereof, nor is there anything which
is ambiguous, incongruous or suggestive. Rather, applicant's
goods and services involve as their subject matter a search for a
nude centerfold and such meaning is immediately conveyed, without
the need for speculation, conjecture or the gathering of further
information, to consumers by the words "NUDE CENTERFOLD SEARCH."
Thus, while the Examining Attorney has not required, in the
alternative, that applicant disclaim such words pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), in the
context of adult entertainment, there is no doubt on this record
that applicant has no exclusive right to the use of the words
"NUDE" and "CENTERFOLD" nor, insofar as its goods and services
feature as their subject matter the search for a nude centerfold,
does it possess the exclusive right to use of the word "SEARCH."5

5 While applicant indicated a willingness at the oral hearing to at
least disclaim the word "NUDE" and possibly the word "CENTERFOLD," any
disclaimer should be submitted prior to publication of its mark in the
Ser. No. 76608812
13
However, as to the word "MISS," we disagree with the
Examining Attorney that the relevant consuming public would
immediately regard such term as signifying only its literal
meaning of a young unmarried woman, notwithstanding the bare fact
that in today's popular culture, it is common knowledge that nude
centerfold models, especially those whose natural or enhanced
talent and ability have garnered them public recognition as a
"Miss Of The Month" or other perhaps coveted title, are
overwhelmingly young unmarried women. Instead, as the third-
party registrations submitted by applicant, as well as the
Examining Attorney's own evidence, make clear, the term "MISS" is
used in its dictionary sense of "a prefix to the name of that
which a usually young woman is held to represent."6 As so used,
such term would be perceived by consumers, however, as a courtesy
title or form of polite address for a young woman selected as the

Official Gazette. For the proper format of a disclaimer, attention is
directed to TMEP Sections 1213.08(a) and (b) (4th ed. 2005).
6 Of the 28 third-party registrations relied upon by applicant, 18 are
owned by the same registrant; the other ten are owned by nine
different registrants; and all involve entertainment services in the
nature of beauty pageants or beauty contests. Although, for the first
time at oral argument, the Examining Attorney argued that the third-
party registrations were not relevant because the services recited in
such registrations are different from the goods and services for which
applicant seeks registration, we fail to see any meaningful difference
between conducting a beauty pageant or contest and either (i)
producing a television series featuring a beauty pageant or contest or
(ii) selling pre-recorded videotapes, CD-ROMS and DVDs featuring such
entertainment. The third-party registrations are therefore relevant
and the Examining Attorney has offered no examples to the contrary in
which, for instance, the word "MISS" is disclaimed when forming part
of a mark registered on the Principal Register or a mark incorporating
such word is registered on the Supplemental Register. Moreover, while
applicant has additionally relied upon three third-party applications
which it asserts have been "allowed," such applications are proof of
nothing more than that they were filed and thus are without probative
value. See Jetzon Tire & Rubber Corp. v. General Motors Corp., 177
USPQ 467, 468 (TTAB 1973) at n. 3.

Ser. No. 76608812
14
winner or representative of a beauty contest, featured periodical
pictorial, or other media layout or display, but it does not
merely describe such designations or categories with any degree
of particularity nor constitute its own subject matter. That is,
while concededly a subtle point, use of the term "MISS" is
essentially a legal fiction in that it is not regarded by the
relevant purchasing public in a strictly dictionary sense of a
young unmarried woman but, rather, is understood as simply
suggestive of an honorary title or name given to the young woman
selected as a winner or representative of a particular event or
activity. Consequently, when the term "MISS" is combined with
the descriptive wording "NUDE CENTERFOLD SEARCH," the resulting
mark as a whole is not merely descriptive of the adult
entertainment subject matter of applicant's goods and services,
but is only suggestive thereof.
Stated otherwise, while "NUDE CENTERFOLD SEARCH" is
indeed merely descriptive of the specific theme of applicant's
"pre-recorded videotapes, CD-ROMS, and DVDS featuring adult
entertainment" and its "entertainment services, namely, a
television series featuring adult entertainment," the addition of
the title or form of address "MISS" to form the mark "MISS NUDE
CENTERFOLD SEARCH" is suggestive of such goods and services
inasmuch as it would be regarded by consumers as the title
conveyed upon the prevailing "contestant" in an adult beauty
pageant contest or search to find a nude centerfold. In
garnering such a perception, consumers would need to employ just
enough of a multi-stage reasoning process, or utilize at least a
Ser. No. 76608812
15
minimum amount of imagination or thought, in order to determine
the particular subject matter of applicant's goods and services.
The mark "MISS NUDE CENTERFOLD SEARCH" is therefore suggestive
rather than merely descriptive of such adult-themed goods and
services.
Finally, because the plethora of third-party
registrations submitted by applicant serve at the very least to
raise some doubt that the relevant consuming public would regard
applicant's "MISS NUDE CENTERFOLD SEARCH" mark in its entirety as
immediately conveying the subject matter of its goods and
services, we resolve such doubt, in accordance with the Board's
settled practice, in favor of the publication of applicant's mark
for opposition.
Decision: The refusal under Section 2(e)(1) is
reversed.