One Nation Enterprises

Trademark Trial and Appeal Board

Jul 25, 2016

No. 86260948 (T.T.A.B. Jul. 25, 2016)

Mailed: July 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re One Nation Enterprises
———
Serial No. 86260948
filed April 23, 2014
———
Derek A. Simpson, Law Offices of Derek A. Simpson, for Applicant.
Simon Teng, Trademark Examining Attorney, Law Office 105, Susan Hayash, Man-
aging Attorney.
———
Before Mermelstein, Kuczma, and Greenbaum, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Alleging use of its mark in commerce under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), One Nation Enterprises applied to register

for use on
Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; Athletic uniforms; Com-
bative sports uniforms; Compression garments for athletic
or other non-medical use, namely, shorts; Fight shorts for
mixed martial arts or grappling; Headgear, namely, hats,
caps; Martial arts uniforms; Martial arts uniforms,
namely, gis; Wearable garments and clothing, namely,
shirts; Women’s clothing, namely, shirts, dresses, skirts,
This Opinion is Not a
Precedent of the TTAB
Serial No. 86260948
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blouses.
As stated in the application, “[t]he mark consists of the stylized cursive words ‘JIU-
JITEIRO,’ ” and “[t]he English translation of ‘JIUJITEIRO’ in the mark is a ‘prac-
titioner of Brazilian jiu-jitsu.’ ” The Examining Attorney has not accepted Applicant’s
offer of a disclaimer of JIUJITEIRO apart from the mark as shown.
The Examining Attorney issued a final refusal to register under Trademark Act
§ 2(e)(1), on the ground that the mark is primarily merely descriptive of the identified
goods, and Applicant appealed. We reverse.
I. Issues
This application comes before us having been refused registration on the ground of
descriptiveness. But we need not dwell on that issue, for Applicant has essentially
admitted that JIUJITEIRO is descriptive with respect to the identified goods by
proffering a disclaimer of that term apart from the mark as shown. App. Br. 14
TTABVue 7 (referring to the descriptiveness of the literal element of the mark as a
“moot point”); Resp. to Ofc. Action (June 1, 2015) (“Applicant no longer seeks to per-
suade [the] Examining [A]ttorney to withdraw the 2(e)(l) objection. . . . Applicant
has, therefore, amended its application to disclaim . . . JIUJITEIRO.”). The Exam-
ining Attorney refused to accept Applicant’s disclaimer, pointing out that Applicant
may not disclaim the entire mark. Final Ofc. Action (June 16, 2015).
The Examining Attorney is correct that a mark may not be disclaimed in its en-
tirety, Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed.
Cir. 1991), and that usually, a mark consisting solely of descriptive words is properly
refused registration under § 2(e)(1), even if the applied-for mark includes minor or
Serial No. 86260948
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insignificant non-descriptive characteristics, such as routine stylization of descriptive
wording. Id., 21 USPQ2d at 1051 (“Such a mark, in effect, has no ‘unregistrable com-
ponent’ because the dominant feature of the mark extends a nonregistrable meaning
to the whole. The entire mark becomes nonregistrable.”). Conversely, if the stylization
in which Applicant’s mark appears is distinctive,1 the mark would be “otherwise reg-
istrable,” and may be registered on the Principal Register with a disclaimer of its
literal element:
[T]he issue before us is whether the stylization of the let-
tering in which SADORU appears[2] creates a separate and
inherently distinctive commercial impression apart from
the word itself, such that the mark as a whole is not merely
descriptive. Although an entire mark cannot be disclaimed
and also registered, nevertheless where the literal compo-
nents of a mark are combined in a distinctive design or dis-
play it is possible to disclaim those literal components and
still have a mark which is registrable as a whole. In re
Jackson Hole Ski Corp., 190 USPQ 175, 176 (TTAB 1976).
In re Sadoru Grp. Ltd., 105 USPQ2d 1484 1485–86 (TTAB 2012).
II. Distinctiveness of Applicant’s Mark
The determination of whether a particular stylization is inherently distinctive is
necessarily somewhat subjective, and depends on the particular nature of the mark
at issue. While prior decisions regarding different marks are not determinative, both
Applicant and the Examining Attorney have cited several cases, and we find they

1 While it is possible for a non-distinctive stylization to acquire distinctiveness, see Trade-
mark Act § 2(f), Applicant makes no such claim in this case.
2 In Sadoru Grp., the applicant sought to register the word SADORU (Japanese for saddle)
in the following stylization:

Serial No. 86260948
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provide some useful perspective.
In support of its appeal, Applicant cites In re Jackson Hole Ski Corp., and In re
Clutter Control Inc., 231 USPQ 588 (TTAB 1986). In Jackson Hole, the mark JACK-
SON HOLE in the following stylization:

for providing skiing resort facilities, was found registrable on the Principal Register
with a disclaimer of JACKSON HOLE. The Board agreed with the applicant that
the juxtaposition of the words with their enlarged initial letters JH arranged in the
manner of a monogram were “sufficiently distinctive to create a commercial impres-
sion separate and apart from the disclaimed words ‘JACKSON HOLE.’ ” Jackson
Hole, 190 USPQ at 176. The Board reversed the refusal, allowing the mark to be
registered with a disclaimer of the literal elements.
In Clutter Control, the Board considered the registrability of the mark CON-
STRUCT-A CLOSET, in the following stylization:

for components used to construct personal storage systems. Although the Board held
the wording descriptive, the mark was found registrable with a disclaimer of CON-
STRUCT-A-CLOSET, because “the tube-like rendition of the letter ‘C’ in the words
‘construct’ and ‘closet’ ma[d]e a striking commercial impression, separate and apart
from the word portion of applicant’s mark.” Clutter Control, 231 USPQ 589–90.
Arguing the contrary, the Examining Attorney cites In re Sambado & Son Inc., 45
USPQ2d 1312 (TTAB 1997), and In re Bonni Keller Collections Ltd., 6 USPQ2d 1224
Serial No. 86260948
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(TTAB 1987). E.A. Br. 17 TTABVue 6–7. In Sambado, the Board refused registration
on the Supplemental Register of the designation FRUTTA FRESCA displayed as
follows:

for fresh deciduous fruits, with FRUTTA disclaimed. The Board found FRUTTA
FRESCA (“fresh fruit” in English) to be generic for the identified goods, and therefore
incapable of identifying and distinguishing the applicant’s goods in commerce. “More-
over, applicant’s presentation of the term is not so unique or unusual as to create a
distinctive commercial impression apart from the words.” Sambado, 45 USPQ2d at
1315. The applied-for designation would not have been registrable even if the entire
mark had been disclaimed. Id.
In Bonni Keller, the Board considered the registrability of LA LINGERIE stylized
as follows:

on the Supplemental Register for clothing, namely undergarments and retail store
services in the field of clothing, with LINGERIE (the English translation of the
mark) disclaimed. The Board found the literal element incapable of distinguishing
the goods and services, and that the stylization of the mark was not sufficient to ren-
der the generic wording registrable:
In order for a term otherwise unregistrable to be capable of
distinguishing an applicant’s goods, the presentation of the
term must be sufficiently distinctive so as to create a com-
mercial impression separate and apart from the unregis-
trable components whereby it is possible to disclaim those
unregistrable components and still have a mark which is
Serial No. 86260948
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registrable as a whole. See In re Carolyn’s Candies, Inc.,
206 USPQ 356 (TTAB 1980).[3] Recognizing that the deter-
mination of whether the stylization of an otherwise unreg-
istrable designation is sufficiently distinctive in character
to “rescue” the designation as a whole is a necessarily sub-
jective one, it is our view that the presentation of appli-
cant’s mark simply does not possess the degree of styliza-
tion necessary to warrant allowance on the Supplemental
Register. We believe that the Carolyn Candies, Jackson
Hole and In re Wella Corp., 565 F.2d 143, 196 USPQ 7
(CCPA 1977),[4] cases . . . relied on by applicant, all in-
volved styles of display of words more fanciful, eye catching
and imaginative than that involved herein. We find the
presentation of applicant’s LA LINGERIE to be rather or-
dinary and nondistinctive in appearance and closer in style
to the display of the BODY SOAP designation in the case
of In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB
1983).[5]
Bonni Keller, 6 USPQ2d at 1227 (citations revised).
We agree with the Examining Attorney that the Jackson Hole and Clutter Control

3 In Carolyn’s Candies, the Board found the mark YOGURT BAR stylized as:

for candy bars, to be registrable on the Supplemental Register with a disclaimer of YOGURT
BAR.
4 In Wella, the Court of Customs and Patent Appeals found the mark BALSAM, displayed
as follows:

registrable on the Supplemental Register for hair conditioner and hair shampoo, with a dis-
claimer of BALSAM.
5 In Cosmetic Factory, the Board found the designation BODY SOAP in the following styli-
zation:

for body shampoo in liquid form to be unregistrable on the Supplemental Register.
Serial No. 86260948
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cases do not strongly support Applicant’s position. In both cases, the marks were
found registrable because of the particular arrangement of the words, and in Clutter
Control, the use of letters as design elements, neither of which is the case with Ap-
plicant’s mark. But by the same token, Sambado and Bonni Keller6 offer but weak
support for the Examining Attorney’s position. The marks in both cases were dis-
played in ordinary, easily readable typefaces. The prospective purchaser coming
across either mark would see little or nothing but the generic words themselves.
By contrast, Applicant’s mark

is not displayed in a font. Rather, it bears the appearance of an idiosyncratic hand-
written cursive script. The literal element, the descriptive word JIUJITEIRO, is not
easily discernable on first impression. While marks in many cursive scripts would
surely fall closer to the marks in Sambado and Bonni Keller in distinctiveness (or the
lack of it), the fact that many cursive scripts are easily readable and indistinctive
does not mean that all must be so. We think that in this case the stylization of Appli-
cant’s mark is sufficient to create a distinctive commercial impression apart from the
literal element of the mark, and sufficient to justify registration notwithstanding the

6 Applicant maintains that Sambado and Bonni Keller are inapposite because the question
in both was whether the marks were registrable on the Supplemental Register notwithstand-
ing their generic wording. We agree that the situation in this case not identical, although it
is analogous.
Serial No. 86260948
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descriptiveness of the disclaimed term. The stylization of Applicant’s mark is in es-
sence a recognizable and distinctive design in its own right, regardless of the literal
meaning conveyed by the word so displayed.
III. Conclusion
We agree with the Examining Attorney “that whether a mark’s stylization reaches
the minimum threshold of creating a distinctive element is dependent on the individ-
ual mark.” E.A. Br. 17 TTABVue 7 (citing Sadoru Grp., 105 USPQ2d at 1489). Having
carefully considered all the evidence and argument of record, it is our opinion that in
this case, Applicant has crossed that threshold. We find Applicant’s mark registrable
with a disclaimer of the literal element of the mark.7

Decision: Applicant’s disclaimer of JIUJITEIRO will be entered and the refusal to
register on the ground of mere descriptiveness is reversed.

7 Because we reverse, we need not consider Applicant’s request for amendment to the Sup-
plemental Register. App. Br. 14 TTABVue 14 (requesting leave to amend if the refusal to
register is affirmed). But had we affirmed, such leave would have been denied. Trademark
Rule § 2.142(g) (“An application which has been considered and decided on appeal will not be
reopened except for the entry of a disclaimer . . . or upon order of the Director, but a petition
to the Director to reopen an application will be considered only upon a showing of sufficient
cause for consideration of any matter not already adjudicated.”). Had Applicant wished to
argue registrability on the Supplemental Register in the alternative, it should have raised
that issue prior to appeal, or upon remand for good cause requested prior to final decision.