Joseph A. Tabe

Trademark Trial and Appeal Board

Jul 10, 2015

No. 86164579 (T.T.A.B. Jul. 10, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Joseph A. Tabe
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Serial Nos. 86163225 and 86164579
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Matthew H. Swyers of The Trademark Company PLLC
for Joseph A. Tabe.
Heather A. Sapp, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Seeherman, Wellington and Wolfson,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
On January 11, 2014, Joseph A. Tabe (“Applicant”), dba Fashion Social Media,
filed an application (Serial No. 86163225) to register FASHION SOCIAL MEDIA, in
standard characters, for services in Class 35.
On January 14, 2014, Applicant, dba Fashion Social Network, filed a second
application to register FASHION SOCIAL NETWORK in standard characters
(Serial No. 86164579) as a mark for services in Class 35.
The following services are identified in both applications:
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Advertising and marketing services provided by means of indirect
methods of marketing communications;, [sic] namely, social media,
search engine marketing, inquiry marketing, internet marketing, live
chat marketing, mobile marketing, blogging, Internet television
marketing and other forms of passive, sharable or viral
communications channels, providing business information in the field
of fashion and fashion social media, providing marketing consulting in
the field of fashion and fashion social media, executing social media
strategy and marketing consultancy focusing on clients to create and
extend their product and brand strategies by building virally engaging
marketing solutions, providing a website that displays rankings of
fashion topics of information; e.g. models, fashion, dress code,
community culture, brands, styles, trends, trending, beauty,
photographic images, arts, hair stylists, fashion expressions,
expressions, love, the popularity of social happenings based on social
media for entertainment and fashion world purposes, providing
technology consulting in the field of social media and fashion, online
service for connecting social network users with retailers for the
purpose of facilitating discounted purchases of fashionable products,
providing a website for users with specific informed recommendations
of specific consumer products and services validated by the users'
inputted preferences and social network, computer services, namely,
providing an interactive web site featuring technology that allows
users to consolidate and manage centralized fashion and social
networks, accounts, and connections to existing and emerging
application programming interfaces (APIs), conducting on-line
personal lifestyle performance assessments based on principles of
emotional happiness by means of the users' inputted preferences and
social network, providing fashion education and faith-based
devotionals via social networks, organization of fashion education and
shows for commercial purposes, entertainment in the nature of fashion
shows, entertainment and fashion services, namely, production and
distribution of ongoing television programs in the field of fashion,
models, dress code, trending, branding, styles, celebrity etc,
organization of fashion shows for entertainment and education
purposes, production and distribution of videos in the field of
education, fashion, clothing, wearable, garments, styles, brands,
expressions, modeling, fashion advertisement, retail store services
featuring virtual goods, namely, clothing, wearable, fashionable,
electronics, digital, imagery for use in online virtual worlds. Personal
stylist services, namely, evaluating the physical attributes, lifestyle,
lifestyle expression, corporate fashion, casual fashion, cultural fashion,
community fashion, and fashion styles of others and recommending
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clothing and accessories to achieve the personal image desired by the
client.

The latter application for FASHION SOCIAL NETWORK includes the following
additional services, also in Class 35:
providing a network for fashion show; fashion world show; celebrity
fashion media; celebrity model media; fashion world celebrities; dress
world media; dress code world media, a platform for fashion social
media, a platform for fashion social networking, a platform for
discussing fashion topics of information, fashion television
broadcasting platform.1

Registration of both applications was refused by the Examining Attorney
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the marks are merely descriptive of the identified services.
Applicant appealed the refusals of registration, and filed appeal briefs in each
appeal. The Examining Attorney then filed a motion to consolidate the appeals on
the basis that both involve common issues of law and fact. The Board consolidated
the appeals on May 4, 2015, and the Examining Attorney filed a single brief with
respect to both appeals. Applicant did not file a reply brief. We decide both appeals
in this single opinion
We affirm the refusal with respect to each application.
Section 2(e)(1) prohibits the registration of a mark which, when used in
connection with the goods of the applicant, is merely descriptive of them. Section 3

1 Application Serial No. 86164579 for FASHION SOCIAL NETWORK is based on Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and claims first use of the mark as early as
June 7, 2010 and first use in commerce as early as May 25, 2012. Application Serial No.
86163225 for FASHION SOCIAL MEDIA is also based on Section 1(a) and claims first use
as early as August 7, 2010 and first use in commerce as early as May 25, 2012.
Serial Nos. 86163225 and 86164579
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makes this prohibition applicable to service marks. A term is merely descriptive if it
immediately conveys knowledge of a significant quality, characteristic, function,
feature or purpose of the products or services it identifies. See, e.g., In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Determining the
descriptiveness of a mark is done in relation to an applicant’s identified goods
and/or services, the context in which the mark is being used, and the possible
significance the mark would have to the average purchaser because of the manner
of its use or intended use. See In re Chamber of Commerce of the U.S., 102 USPQ2d
at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). Descriptiveness of a mark is not considered in the
abstract. In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. In other words, the
question is whether someone who knows what the services or products are will
understand the mark immediately to convey information about them. In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
With respect to the application for FASHION SOCIAL MEDIA, the Examining
Attorney relies on definitions for “fashion” as meaning “a popular trend, especially
in styles of dress and ornament or manners of behaviors”2 and for “social media” as
“websites and applications that enable users to create and share content or to
participate in social networking.”3 When these terms are taken together, as
FASHION SOCIAL MEDIA, the Examining Attorney contends that the mark

2 Oxford Dictionaries, www.oxforddictionaries.com, November 25, 2014 Office action, p. 24.
3 Id., p. 2.
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describes a feature and subject matter of the services, namely, websites and
applications that enable users to create and share content about the fashion
industry or to participate in social networking about the fashion industry.
In further support of her position, the Examining Attorney points out that
Applicant’s own identification highlights that “social media” is a feature of his
services. Many of the services are specifically stated to be provided by means of
“social media” or to be in the field of “fashion social media,” for example,
“Advertising and marketing services provided by …social media”; “Providing
business information in the field of fashion and fashion social media”; Providing
marketing consulting in the field of fashion and fashion social media”; “Providing a
website that displays ranking of fashion topics of information, e.g., … the popularity
of social happenings based on social media for …fashion world purposes; “Providing
technology consulting in the field of social media and fashion”; and “Providing
fashion education …via social networks.” She also points out that Applicant’s
marketing materials describe his services as “a fashion social media network,”4 and
as impacting “community awareness through the fashion social media network.”5
These materials also urge potential purchasers/investors, “Let us bring fashion
social network and fashion social media to your community as a tool for fashion
knowledge sharing and for fashion products distribution.”6

4 Original specimen, filed January 11, 2014, p. 14.
5 Id. at 18.
6 Id. at 28.
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Based on the foregoing, we have no doubt that consumers would immediately
understand, upon seeing the mark FASHION SOCIAL MEDIA used in connection
with the above highlighted services, that these services relate to the topic of fashion
using social media. Accordingly, the mark is merely descriptive of these services.
We are not persuaded by Applicant’s arguments that the mark is suggestive. For
example, Applicant points out that there are several definitions of “fashion,”
including “manner; way; mode” and “to bend (a plate) without preheating.”
However, as stated above, the meaning of a term must be considered in relation to
the identified services (described, in part, as being “in the field of fashion and
fashion social media”), and when used in connection with Applicant’s identified
services it is clear that the definition referenced by the Examining Attorney would
apply.
Applicant poses the questions whether FASHION SOCIAL MEDIA creates “an
instant association with fashion shows, educational videos, marketing information,
or personal stylist services?” “Or does the term FASHION SOCIAL MEDIA
automatically cause a consumer to think of a social networking site?” Brief, 4
TTABVUE 15. Applicant implies, of course, that the answer to these questions is
“no.” But to the extent that Applicant contends that to be merely descriptive a mark
must immediately tell a consumer what the goods or services are, that is not a
correct application of the test. As explained above, descriptiveness of a mark is not
considered in the abstract; the question is whether someone who knows what the
services or products are will understand the mark immediately to convey
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information about them. Further, to the extent that Applicant contends that the
mark must directly convey information about all of the services listed in the
identification, that again is not correct. “A mark ‘need not recite each feature of the
relevant goods or services in detail to be descriptive,’ it need only describe a single
feature or attribute.” Chamber of Commerce, 102 USPQ2d at 1219 (quoting In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001)).
Further, “a mark need not be merely descriptive of all recited goods or services in an
application. A descriptiveness refusal is proper ‘if the mark is descriptive of any of
the [services] for which registration is sought.” Id. (quoting In re Stereotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005)).
Applicant also relies on several third-party registrations for marks that include
the term FASHION for which no disclaimer of FASHION was required. However,
many of these marks are unitary terms, either because FASHION is not a separate
word, or it is used as part of a slogan, e.g., FASHIONLAB, FASHION.ME, FIRST
COMES FASHION; according to examination policy, disclaimer of FASHION would
not be required in such circumstances. See TMEP §§ 1213.05; 1213.05(b);
1213.05(b)(i).
Accordingly, we affirm the refusal of registration with respect to the mark
FASHION SOCIAL MEDIA.
We reach the same conclusion for the mark FASHION SOCIAL NETWORK.
Much of the evidence submitted by Applicant and the Examining Attorney in
connection with this application is the same as that submitted in the FASHION
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SOCIAL MEDIA application, so we need not repeat it here. In addition to the
definition of “fashion,” the Examining Attorney has made of record definitions of
“social networking”: “The use of dedicated websites and applications to interact with
other users, or to find people with similar interests to oneself”;7 “the creation and
sharing of information and ideas in online communities accessed via mobile and
web-based technologies.8
In addition to the foregoing evidence, we note Applicant’s description of his
services in his application as involving a “social network.” See, in particular,
“providing fashion education … via social networks” and “a platform for fashion
social networking.” In addition, Applicant’s marketing materials use “fashion social
network” in a descriptive sense, e.g., his fashion world media and fashion search
engine platform encompass a fashion social network.9
Again, we have no doubt that consumers encountering the mark FASHION
SOCIAL NETWORK in connection with, for example, the service of “providing
fashion education … via social networks” would immediately understand that a
major characteristic of the service is to provide information about fashion through a
social network. Because the mark immediately and directly conveys information
about characteristics of the service, we find that it is merely descriptive.

7 Oxford Dictionaries, www.oxforddictionaries.com, November 25, 2014 Office action, p. 7.
8 Macmillan Dictionary, www.macmillandictionary.com, November 25, 2014 Office action,
p. 11.
9 Original specimen, filed January 14, 2014, p. 5.
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Applicant makes the same arguments as it did for FASHION MEDIA
NETWORK with respect to why FASHION SOCIAL NETWORK is not merely
descriptive; we find these arguments similarly unpersuasive.
Decision: The refusals to register Applicant’s marks FASHION MEDIA
NETWORK and FASHION SOCIAL NETWORK on the ground that they are
merely descriptive of Applicant’s identified services are affirmed.