Monkey IP Limited

Trademark Trial and Appeal Board

Aug 14, 2020

88265123 (T.T.A.B. Aug. 14, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Monkey IP Limited
_____

Serial No. 88265123
_____

Daniel J. Gross of Myers Wolin LLC,
for Monkey IP Limited.
Regina C. Hines, Trademark Examining Attorney, Law Office 114,
Laura Kaufman, Managing Attorney.
_____

Before Taylor, Heasley and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Monkey IP Limited (“Applicant”) seeks registration on the Principal Register of
the mark SIKSILK (in standard characters) for
Clothing, namely, baseball jerseys, hockey jerseys, vests, sleeveless tops,
hoodies, trousers, pants, shorts, sweaters, jumpers, T-shirts, oversized T-
shirts, shirts, polo shirts, tracksuits, jackets, coats, skirts, dresses, blouses,
crop tops, bandeau tops, swimwear, winter sports wear; footwear; headgear;
Anti-sweat underwear; clothing for babies, namely, T-shirts, jumpers, jerseys,
trousers, all-in-ones, dresses, skirts, jackets, coats, gloves, booties; Bandanas
and neckerchiefs; Baseball jerseys; Bath robes; Bathing caps; Bathing trunks;
Beach clothes, namely, swimwear, trunks, bathing suits, bikinis, shorts, T-
shirts, sarongs; Beach shoes; Belts; Berets; Bikinis; lingerie, namely, bodices;
Boots; Boots for sports; suspenders; Brassieres; Bralettes; Breeches for wear;
Camisoles; Cardigans; Cap peaks; headwear, namely, caps, bobbly hats, beanie
Serial No. 88265123
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hats, ski hats; Clothing for gymnastics, namely, leotards; Clothing of
imitations of leather, namely, trousers, jackets, gloves, skirts, vests, and
waistcoats; Clothing of leather, namely, leather trousers, leather jackets,
leather gloves, leather skirts, and leather vests; Coats; clothing, namely,
corsets; Crop tops; Cyclists' clothing, namely, cycling shorts, trousers, socks,
vests, jackets; Dresses; Dressing gowns; Dressing robes; Ear muffs; Esparto
shoes and sandals; Fingerless gloves; Fishing vests; soccer boots; Fur stoles;
Furs clothing; Gabardines; Gymnastic shoes; Handkerchiefs; Hats;
Headbands; Headwear; Heels; Hockey jerseys; Hosiery; Hoodies; Hooded
jackets; Jackets; Jeans; Jerseys; Jumper dresses; Jumpers; Jogging bottoms;
Knitwear, namely, jumpers and scarves; Leg warmers; Leggings; Lingerie;
Long-sleeved tops; Mittens; Money belts; Motorcyclists' clothing, namely,
clothing specifically adapted for motorcyclists, such as leather trousers, leather
jackets, and leather gloves; Muffs; Neck ties; Overalls; Outerwear, namely,
coats and jackets; Pants; Parkas; Plimsolles; Ponchos; Polo Shirts; Pullovers;
Pyjamas; Running shoes; Sandals; Saris; Sarongs; Sashes for wear; Scarfs;
Shawls; Shirts; Shorts; Shoes; Singlets; Ski boots; Ski gloves; Skirts; Skull
caps; Sleep masks; Sleepwear; Sleeveless tops; Slippers; undergarments,
namely, slips; Socks; Soles for footwear; Sports shoes; Stockings; Suits;
Suspenders; Sweat-absorbent stockings; Sweaters; Swimsuits; Swimwear; T-
shirts; Ties; Tights; Tips for footwear; Togas; Top hats; Tops as clothing;
Topcoats; Tracksuits; Tracksuit jackets; Tracksuit trousers; footwear, namely,
sneakers; Trousers; Turbans; Undergarments; Underpants; Underwear;
Uniforms; Vests; headwear, namely, visors; Waistcoats; Wellington boots; Wet
suits; Windbreakers, namely, coats and jackets in International Class 25.1
The Trademark Examining Attorney has refused registration of the applied-for
mark under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground
that it is deceptive when used in connection with the identified goods. After the
Examining Attorney made the refusal final, Applicant appealed to this Board. We
affirm the refusal to register.

1 Application Serial No. 88265123 was filed on January 17, 2019 under Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(b), based on European Union Registration No. 012144481,
which was attached to the application. The application claims prior Registration No. 4934460
issued April 12, 2016 under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f, for the
same mark, also in standard characters, for a variety of goods and services. While the prior
registration includes International Class 25 goods, the goods are more specialized than the
apparel items listed in the subject application.
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I. Applicable Law on Deceptiveness
Under Section 2(a) of the Trademark Act, registration must be refused if a mark
“[c]onsists of or comprises… deceptive … matter.” 15 U.S.C. § 1052(a). A deceptive
mark cannot be registered on the Principal or Supplemental Register, and neither
acquired distinctiveness nor a disclaimer of the deceptive matter can make it
registrable. In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d 1259, 1262 (Fed. Cir.
1988) (“it is too well established for argument that a mark which includes deceptive
matter is barred from registration and cannot acquire distinctiveness.”); R. Neumann
& Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276, 278-79 (CCPA 1964)
(“[N]o trademark rights can be acquired in a trademark that is deceptive …. The
courts and, indeed, the Patent Office tribunals have been commendably zealous in
the protection of the public interest from the practice of deceit and deception.”).
The test for determining whether a mark is deceptive sets forth three
requirements:
(1) Is the term misdescriptive of the character, quality, function, composition
or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription
actually describes the goods?
(3) If so, is the misdescription likely to affect the purchasing decision of a
significant portion of relevant consumers?

In re Budge, 8 USPQ2d at 1260; In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371
(TTAB 2017). Because the term “comprises” in the statute means “includes,” a mark
need not be misdescriptive in its entirety in order to qualify as deceptive under
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Trademark Act § 2(a).2 ”It is well established that a mark may be found deceptive on
the basis of a single deceptive term that is embedded in a larger mark….” In re White
Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013). See R. Neumann & Co. v. Bon-
Ton Auto Upholstery, Inc., 326 F.2d 786, 140 USPQ 276 (CCPA 1964) (mark DURA-
HYDE deceptive as applied to plastic film for furniture slip covers not made of hide);
In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (mark consisting of the alpha symbol
and the letters "CU" deceptive as applied to dietary supplements not including
copper). “Misdescriptiveness of a term may be negated by its meaning in the context
of the whole mark inasmuch as the combination is seen together and makes a unitary
impression.” See In re Budge, 8 USPQ2d at 1261; In re Simmons, Inc., 192 USPQ 331,
333 (TTAB 1976) (WHITE SABLE for “brushes used for artistic painting” held not
deceptive because the “characteristic color of sable fur is black” and thus white sable
must come from a fictitious animal that cannot deceptively represent brush hair from
a real animal).
A. Silk is misdescriptive of Applicant’s apparel

“For a term to misdescribe goods, the term must be merely descriptive of a
significant aspect of the goods which the goods could plausibly possess but in fact do
not.” In re White Jasmine, 106 USPQ2d at 1392 (citing In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1051 (TTAB 2002)). A “significant aspect of the goods” is
their material composition. E.g., In re Budge, 8 USPQ2d 1259 (LOVEE LAMB

2 See In re Fox, 702 F.3d 633, 105 USPQ2d 1247, 1250 (Fed. Cir. 2012) (under Trademark Act
Section 2(a), “the word ‘comprises,’ at the time of the statute’s enactment in 1905, meant
‘includes.’”).
Serial No. 88265123
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deceptive for seat covers not made of lambskin); Evans Prods. Co. v. Boise Cascade
Corp., 218 USPQ 160 (TTAB 1983) (CEDAR RIDGE deceptive for embossed
hardboard siding not made in whole or in part of cedar); In re Intex Plastics Corp.,
215 USPQ 1045 (TTAB 1982) (TEXHYDE deceptive for synthetic fabric for use in the
manufacture of furniture, upholstery, luggage and the like not made of hide).
In support of her finding that the term SILK is misdescriptive of the composition
of Applicant’s apparel, the Examining Attorney submitted definitions from the
American Heritage Dictionary of silk as a “fine, lustrous fiber,” “thread or fabric made
from this fiber,” and “a garment made from this fiber.”3 The Examining Attorney also
submitted webpages showing that apparel items listed in the application such as
dresses, shirts, blouses, jackets, shorts, and pants, may be made of silk.4

3 October 22, 2019 Office Action, TSDR 5. The Trademark Status and Document Retrieval
(TSDR) citations refer to the downloadable .pdf version of the documents available online
from the electronic file for the involved application.
4 April 11, 2019 Office Action, TSDR 20-25.
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Even though the record evidence shows that the apparel items listed in the
application may be made of silk, Applicant admitted during examination, that “[t]he
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majority of the goods listed would not be made of silk….” Hence, the mark SIKSILK
is misdescriptive of Applicant’s goods.5
Nevertheless, Applicant argues that prospective purchasers of its clothing do not
regard the term SIKSILK as misdescriptive of the material composition of the goods,
contending “In addition to the definition of silk as a specific fiber, as indicated by the
Examiner, two common slang meanings for the term are to identify ‘fine clothing’ and
to describe something as “very good” as an alternative to the slang term ‘sick.’”6 With
respect to the alternate definitions of SILK, Applicant submitted the following
definitions from Cassel’s Dictionary of Slang (2005) and McGraw Hill’s Dictionary of
American Slang and Colloquial Expressions (2005):7

5 August 8, 2019 Response, TSDR 15. The presence in the identification of goods of items
which that may be made of silk does not obviate the refusal. Registration of a mark in an
application containing multiple goods in a class may be refused as to the entire class if “the
mark is deceptive as applied to any of the goods in the application.” In re White Jasmine LLC,
106 USPQ2d at 1391.
6 4 TTABVUE 11. TTABVUE provides access to the Board’s electronic docket for the appeal,
and citation refers first to the docket entry and then, if applicable, to the specific page within
the docket entry.
7 August 8, 2019 Response, TSDR 25-26.
Serial No. 88265123
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Applicant also submitted definitions from the Urban Dictionary, a collaborative
source.8 See In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2061 n.3 (TTAB 2013)
(“[W]hile a definition in Urban Dictionary may be indicative of what a term means to
a composite of the general public, we are less sure that it represents the meaning to
a substantial composite, given that just one person can submit a proposed
definition.”).

8 Id., TSDR 21-25.
Serial No. 88265123
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Serial No. 88265123
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Serial No. 88265123
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We find that these definitions are not sufficient to counter the evidence of record
that SILK in the mark SIKSILK when applied to clothing will be perceived as
describing clothing made of silk, rather than as the slang term for fine clothing or
something very good. It gives us pause that all three slang dictionaries have different
definitions for the word SILK in the singular, as it appears in the mark, and SILKS
in the plural. Cf. In re Jim Crockett Promotions, Inc., 5 USPQ2d 1455, 1456 n.5 (TTAB
1987) (rejecting single dictionary definition of word where six other dictionaries did
not define the word in the same manner). The three slang dictionaries variously
define SILK as the noun for an English counsel, a Caucasian, an authority figure, or
a broad, and as the adjective for good or excellent. The three slang dictionaries
uniformly define SILKS as clothing, with the Urban Dictionary also defining SILKS
as an item of great worth in a video game. We also find that the slang definitions for
SILK and SILKS themselves do not indicate current wide acceptance, but in some
instances indicate use limited by time or demographic. Most significantly, while the
Serial No. 88265123
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record shows contemporary use of “silk” as a clothing fabric, there is no evidence of
contemporary use of “silk” as the slang term for fine clothing or something very good.
We find that the relevant purchasers for the goods in the application are those
who purchase or wear clothing, which is everyone. There is no restriction in
Applicant’s identification of goods to purchasers of retro or vintage clothing, or to any
particular demographic who may be aware of the slang definitions of silk. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1163 (Fed. Cir. 2014) (“Parties that choose to recite services in their trademark
application that exceed their actual services will be held to the broader scope of the
application.”). We find the dictionary definitions and website evidence available to
the general public to be a more accurate gauge for determining the public perception
of SIKSILK goods to be purchased by the general public. Accordingly, we find the
record evidence showing that SILK is perceived as a fabric and component of clothing
is entitled to more probative weight than the slang definitions of SILK. See In re
Hershey, 6 USPQ2d 1470, 1471 (TTAB 1988) (in connection with a different Section
2(a) refusal, ten and forty year old slang definitions “while relevant, do not carry great
weight in determining whether a substantial number of the general public even
recognize the [slang] term…”).
Applicant also contends that prospective purchasers of its clothing do not regard
the term SIKSILK as misdescriptive of the material composition of the goods because
the term is a double entendre which “references the quality and trendiness of the
Serial No. 88265123
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goods.”9 More specifically, Applicant states in the record that the term SIK, “or its
homonym SICK,”10 is “a slang term typically defined as ‘good.’”11 In addition to the
reference to “sick” in the Urban Dictionary set forth above, we take judicial notice of
the following definition from Merriam-Webster.com Dictionary which corroborates
Applicant’s slang definition:12
sick
adjective
\ ˈsik \
6 slang : outstandingly or amazingly good or impressive

We agree with Applicant that the purchasing public is likely to perceive SIK in
the mark as its phonetic equivalent “sick.” In fact, as shown, SIK is the phonetic
spelling for “sick” provided in the dictionary definition. Further, because the slang
definition acquired sufficient recognition to be included in a general dictionary, we
agree that in the term SIKSILK, the purchasing public is likely to perceive SIK as
conveying the “sick” laudatory slang definition of an adjective for good or impressive.
Combined with SILK and applied to clothing, we find the term SIKSILK will be
perceived as impressive silk clothing.

9 4 TTABVUE 9.
10 August 8, 2019 response, TSDR 16. Applicant also states “SIK is an obvious play on the
word ‘sick.’”
11 Id., TSDR 15, 18-19.
12 https://www.merriam-webster.com/dictionary/sick. Accessed 9 Aug. 2020. The Board may
take judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594,
118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 88265123
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We disagree with Applicant that the addition of SIK to SILK creates a double
entendre which prevents the mark from being perceived as the misdescriptive term
SILK. “A double entendre is registrable only if the second, non-descriptive meaning
would be readily apparent to the consumer from the mark itself.” In re S. Malhotra
& Co. AG, 128 USPQ2d 1100, 1105 (TTAB 2018). Applicant contends that the fact
that the terms SIK and SILK “are alliterative and rhyme is itself a reason to expect
the mark to rely on slang meanings.”13 The words SIK and SILK do not rhyme, and
we examine carefully any claim that alliteration creates a pattern between words.
See DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103
USPQ2d1753, 1758 (Fed. Cir. 2012) (“The record, however, contains no evidence
indicating that a consumer would focus on the alliteration formed by SNAP, SIMPLY,
and SAFER, or that such alliteration would require a consumer to take the inferential
step that the Board described.”). Applicant contends “the fact that SIK is an obvious
play on the word ‘sick,’ and that the use of the term ‘sick’ in the mark is clearly not
intended to be literal, leads consumers to expect that the second half of the mark,
SILK, is also to be understood as slang,” and submitted a page from a book on slang
which states that “alliterative compounds, such as bed-bunny (easy woman)” is a type
of “slang formation.”14

13 6 TTABVUE 16.
14 4 TTABVUE 17; August 8, 2019 Response, TSDR 28. Applicant submitted another book
excerpt (TSDR 27) about slang that rhymes which we find inapplicable in view of our finding
that the words SIK and SILK do not rhyme.
Serial No. 88265123
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We accept Applicant’s premises that there are slang definitions for SICK/SIK
and SILK, and that alliteration may indicate slang, but do not accept Applicant’s
conclusion that SIKSILK as applied to clothing will be perceived as a slang double
entendre connoting “good good” clothing or “good clothing” clothing. The term
SIKSILK does not denote “readily apparent” second expression which may serve as
a double entendre, and Applicant has supplied no evidence except the slang
definitions indicating that prospective purchasers would regard SIKSILK as
conveying a double meaning. This is insufficient to support finding a double
entendre. See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d. 965, 128
USPQ2d 1370, 1376 (Fed. Cir. 2018) (“no additional suggestive meaning of the
proposed marks [RICE THINS and CORN THINS] because similar products, which
are not typically low in calories or known for healthfulness, contain the same
descriptive term of thins. … Therefore, it is reasonable to conclude that Real Foods’
claimed additional meaning of healthfulness would not attach in the eyes of a
consumer”); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at
1755 (“insufficient evidence to demonstrate that, ‘upon seeing the mark SNAP itself,
[purchasers of Inviro's products would] readily understand this connotation’ [applies
not only to the snapping of a syringe plunger, but also to the products ’ ease of use:
that the products are a ‘snap to use.]”); In re 1800Mattress.com IP, LLC, 586 F3d
1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (rejecting double entendre argument
because “the ‘.com’ tail in MATTRESS.COM does not evoke the quality of comfort in
mattresses”). Compare A.F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc.,
Serial No. 88265123
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135 USPQ 459, 460 (TTAB 1962) (“The expression ‘COPY CALF’ is obviously a play
on the familiar expression ‘copy cat’; and, as applied to applicant's goods, rather
than misdescribe such goods it would immediately suggest to purchasers that they
are imitations or copies of wallets and billfolds made of calf skin.”).
We also reject Applicant’s argument that the eight third party registrations for
SILK marks demonstrate that SILK as a component of a mark for clothing is not
deceptive:15
Registration
No.
Mark Goods
1922151 SILK IMPRESSIONS hosiery

3373429

Goods in Int. Cl. 24

clothing apparel, namely, shirts, tops,
pants, underwear, sweaters, jackets, and
infant and toddler one-piece clothing

3792838 HYDRASILK wetsuits

5267513

silk cloth; silk blankets; silk fabrics; bed
sheets; bed spreads; bed skirts; silk bed
blankets; bath linen; bath towels; bath
sheets; interior decoration fabrics; textile
tablecloths

5305818 bed covers; bed linen; bed linen and table
linen; bed throws; fabric of imitation

15 August 8, 2019 Response, TSDR 29-60. We give no consideration to those third party
registrations for SILK marks for clothing in which the mark is not deceptive because the
goods are made of silk or SILK is used descriptively, as shown by the presence of a disclaimer
or claim of acquired distinctiveness. See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB
2012) (“amendment to seek registration under Section 2(f) of the Trademark Act is considered
an admission that the proposed mark is not inherently distinctive.”); In re DNI Holdings Ltd.,
77 USPQ2d 1435, 1442 (TTAB 2005) (“it has long been held that the disclaimer of a term
constitutes an admission of the merely descriptive nature of that term … at the time of the
disclaimer”). We also do not list pending applications. In re Binion, 93 USPQ2d 1531, 1535
n.3 (TTAB 2009) (“Applications are evidence of nothing more than that they were filed.”).
Serial No. 88265123
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animal skins; hand spun silk fabrics;
handkerchiefs of textile; mattress covers;
pillow shams; pillowcases; quilt covers;
silk bed blankets; silk blankets; silk
fabrics for printing patterns; sleeping
bag liners; velvet

5559859 AMSILK Goods in Int. Cl. 1, 3, 5, 10, 19, 22, 23,
24, 26, 28

clothing, namely, shirts, boxing shirts,
pants, motorcycle pants, ski pants,
trousers, ski trousers, dresses, tennis
dresses, suits, sweat suits, swimsuits,
bathing suits, motorcycle rain suits,
flying suits, running suits, ski suits,
socks, pullovers, sweatshirts, vests,
motorcycle vests, underwear, motorcycle
underwear, pajamas, shawls, neckties,
scarves, ties, gloves, motorcycle gloves,
ski gloves, running shorts; sportswear
and sports clothing, namely, shorts,
jogging suits, t-shirts, tennis wear, ski
wear, leggings, gaiters, jackets, namely,
motorcycle jackets, ski jackets, rain
jackets, ponchos, tops, tricot shawls,
jerseys, liveries, uniforms, ballroom
dancing uniforms, baseball uniforms,
martial arts uniforms, school uniforms,
military uniforms, overalls, namely,
nurse overalls, working overalls, overalls
for motor races, motorcycle overalls, knit
face masks, ski masks, belts for clothing;
swim wear, footwear, in particular sports
footwear, sports shoes; headwear, in
particular sports headwear, sports caps
and hats, beanies, headbands, in
particular all of the aforesaid goods
based on or containing recombinant
proteins

5573038 HANSILK body limb compression sleeves for use in
soccer and other sports; compression
garments, namely, compression socks,
Serial No. 88265123
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stockings, leggings, jerseys, vests,
trousers; compression bandages;
compression garments; compression
socks for medical or therapeutic use

5606479 MOMMESILK Goods in Int. Cl. 24

brassieres; caps being headwear; coats;
dresses; dressing gowns; neckties;
pajamas; pocket squares; ready-made
linings being parts of clothing; scarfs;
shirts; short-sleeve shirts; skirts; sleep
masks; trousers; underpants; underwear;
baby layettes for clothing; clothing
layettes

As shown, five of the eight registrations do not involve the general apparel items at
issue here. Two of the registrations do not list clothing but bed linens, and three
registrations list highly specialized clothing (wetsuits, clothing “based on or
containing recombinant proteins,” and compression garments). Finally, the mere
existence of these third-party registrations does not warrant a finding that the mark
SIKSILK is a unitary term with a connotation that outweighs its misdescriptiveness.
See Neumann v. Overseas Shipments, 140 USPQ 276 (“We will not assume any
knowledge on the part of the purchasing public of mere registrations in the Patent
Office and neither will we assume that marks are in continuing use, so as to have had
any effect on the mind of the purchasing public, merely because they have been
registered.” [quoting In re Helene Curtis Industries, Inc., 305 F.2d 492, 134 USPQ
501, 503-4 (CCPA 1962]); In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986) “[E]ven
if the Office has perhaps improvidently, issued registrations of marks containing the
term ‘silk’ for goods not made of silk in circumstances like those presented here, we
Serial No. 88265123
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are not bound by those actions if we believe that registration in the case before us
would be contrary to the statute.”). In sum, we find that the record shows that the
mark SIKSILK is misdescriptive as applied to Applicant’s clothing not made of silk.

B. Prospective purchasers are likely to believe that the misdescription
actually describes Applicant’s clothing

Where the record demonstrates that goods are commonly made from a certain
material, purchasers are likely to believe goods identified by the term for the material
are actually made from that material. In re Budge, 8 USPQ2d at 1261 (“The Board’s
factual inference is reasonable that purchasers are likely to believe automobile seat
covers denominated by the term LAMB or SHEEP are actually made from natural
sheep or lamb skins.”); In re E5, 103 USPQ2d at 1583 (“We find that, because the
evidence shows that copper is a common supplement or ingredient in dietary
supplements, consumers will believe, based on the mark and the goods at issue, that
applicant's goods contain copper.”). Compare In re Canine Caviar Pet Foods, Inc., 126
USPQ2d 1590, 1597-8 (TTAB 2018) (“Given the lack of evidence that ‘animal
foodstuffs, pet foods, edible pet treats’ is likely to contain caviar, however, we find
that those consumers who perceive the word ‘caviar’ in the mark CANINE CAVIAR
to mean ‘fish roe’ are not likely to believe that Applicant's goods contain caviar.”).
As set forth above, the record includes evidence that clothing may be made of silk,
and Applicant does not dispute that this is the case. With respect to whether
purchasers will believe the misrepresentation, Applicant repeats its argument that
the mark is a double entendre, contending “[e]ven if the term SIKSILK were
Serial No. 88265123
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considered misdescriptive despite the obvious play on words inherent in the mark,
consumers would instantly recognize the double entendre and would not expect such
goods to contain silk.”16 Because we find no double entendre in the combination of
“sik” (or ‘sick”) and “silk,” this argument is not persuasive. Rather, we find that
prospective purchasers are likely to believe that the misdescription SIKSILK actually
describes Applicant’s clothing. See In re Phillips-Van Heusen, 63 USPQ2d at 1053
(“Given the various degrees or grades which the properties of silk fabrics may have,
it is indeed plausible, if not unavoidable, that customers and potential buyers of
applicant's dress shirts and sports shirts made of silklike fabric would believe that
such goods, when marketed under the term ‘SUPER SILK,’ are made of an excellent,
first-rate, or superior grade of genuine silk when, in fact, that is not the case.”).
C. The misdescription is material to the purchasing decision

“[I]n order to establish a prima facie case of materiality there must be some
indication that a substantial portion of the relevant consumers would be materially
influenced in the decision to purchase the product or service by the [] meaning of the
mark.” In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir. 2009).
The materiality factor may be satisfied by evidence that the misdescription would
make the product more appealing or desirable to prospective purchasers. In re White
Jasmine, 106 USPQ2d at 1392.
The record includes excerpts from third party websites that advertise clothing and
extol the virtues of silk:

16 4 TTABVUE 18.
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Great for day or night, our silk dresses are sure to impress.17

Hypoallergenic and breathable silk accessories give you comfy feeling.18

Modern sophistication defines this tailored front-button blouse, made from
pure silk.19

Crafted in silk charmeuse, this feminine top brings a touch of fall drama with
an off-center tie at the neck and covered buttons at the shoulder and cuffs.20

Versatile and timeless, Silkbody’s silk dresses make excellent wardrobe staples
to dress up or down.21

Feel like a movie star very night by sleeping in the luxury of silk. The
unbeatable softness of our 100% silk pajamas will guarantee a good night’s
sleep and keep your body temperature at the optimum. For a little extra
cosiness, the silk/merino blend of the long sleeve nightshirt will see you safely
into the land of Nod. A silk robe is an investment in luxury.22

Silk fibres arc highly absorptive and are easily dyed. We do not add any
treatments to anti-static, flame retardance, wash-and-wear or antibacterial
properties because silk is already naturally endowed with these properties.
Silk is also biodegradable and will decompose easily in landfills.23

Applicant contends that “there is no evidence of advertisements related to silk-
like qualities of the goods,” arguing that the misdescription only is material to the
purchasing decision if the mark is used in conjunction with promotion of the
misdescription. See In re Shapely, 231 USPQ at75 (“we conclude that materiality is
apparent from the representations made on appellant's hangtags”). While the Board

17 October 22, 2019, TSDR 9.
18 Id. at TSDR 16.
19 Id. at TSDR 20.
20 Id. at TSDR 21.
21 April 11, 2010 Office Action, TSDR 29.
22 Id. at TSDR 30.
23 Id. at TSDR 38.
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has cited such advertisements in support of its determination that a mark is
deceptive, it is not a requirement for a finding of deceptiveness. As set forth above, it
is sufficient to evidence that the misdescription would make the product more
appealing or desirable to prospective purchasers. See In re Phillips-Van Heusen
Corp., 63 USPQ2d at 1054 (“Given that silk possesses such desirable attributes, it is
plain that a term which indicates that shirts or other garments are made of silk is
likely to affect the decision to purchase the goods.”).24 Accordingly, we find that the
misdescription in the applied-for mark SIKSILK is likely to affect the purchasing
decision of a significant or substantial portion of relevant consumers.
II. Conclusion
For the reasons discussed, we find that the three requirements for determining
that a mark is deceptive are met, and that the applied-for mark consists of or
comprises deceptive matter within the meaning of Section 2(a) of the Trademark Act.
Decision: The refusal to register Applicant’s mark SIKSILK is affirmed.

24 A requirement that Applicant touts the misdescription in using its mark suggests the
refusal is limited to applications filed on the basis of use in commerce, and that is not the
case. See In re Phillips-Van Heusen Corp., 63 USPQ2d at 1047 n.1 (TTAB 2002) (affirming
deceptiveness refusal issued against application “based upon an allegation of a bona fide
intention to use such term in commerce.”).