O'Rourke-Nicaud Ventures, L.L.C.

Trademark Trial and Appeal Board

Jun 3, 2009

No. 77035443 (T.T.A.B. Jun. 3, 2009)

Mailed:
June 3, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re O’Rourke-Nicaud Ventures, L.L.C.
________

Serial No. 77035443
_______

Gregory C. Smith of Garvey Smith Nehrbass & North, L.L.C.
for O’Rourke-Nicaud Ventures, L.L.C.

David C. Reihner, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Bucher, Grendel and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
O’Rourke-Nicaud Ventures, L.L.C seeks registration on
the Principal Register of the following mark:

for services recited in the application, as amended, as
follows:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77035443
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“health club services, namely, providing
instruction and equipment in the field of
physical exercise” in International Class 41;
and
“physical rehabilitation services and
providing physical rehabilitation facilities”
in International Class 44.1

The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), or in the alternative, that this term is
deceptively misdescriptive, under the same sub-section of
the Lanham Act.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register as to both classes of
services.
Merely Descriptive under Section 2(e)(1)

Applicant argues that its recited services are not
offered in the setting of a typical gymnasium, and that, in
the vernacular, the term “24/7” is hyperbole for “when you
need them” or much of the time, but does not actually create

1 Application Serial No. 77035443 was filed on November 2,
2006 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. No claim is made to the word “Gym”
apart from the mark as shown. The mark consists of the word
“Gym” in red and the designation “24/7” in black. The colors red
and black are claimed as a feature of the mark.

Serial No. 77035443
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the perception that the services are available twenty-four
hours a day, seven days a week. Applicant argues that the
"24/7" portion of the mark is neither descriptive nor
misdescriptive, such that the mark as a whole is
registrable.
By contrast, the Trademark Examining Attorney contends
that consumers seeing this composite term would understand
that the designation describes a facility (a gym) and the
time of its operations (all the time). He argues this is a
desirable and plausible characteristic or feature of
providing instruction and equipment in the field of
physical exercise and providing physical rehabilitation
facilities. This term is given to a single meaning,
namely, that the health club and rehabilitation services
located in this exercise and rehabilitation facility are
available twenty-four hours a day, seven days a week.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive
of analgesic product]. See also In re MBNA America Bank
Serial No. 77035443
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N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
[MONTANA SERIES and PHILADELPHIA CARD are merely descriptive
of applicant’s “affinity” credit card services; a “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service”]; In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK
is merely descriptive for bicycle racks]; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE
PIE is merely descriptive for a potpourri mixture]; and In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a mark
is not considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. That is, when we analyze the evidence of record, we
must keep in mind that the test is not whether prospective
purchasers can guess what applicant’s goods are after seeing
only applicant’s mark. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”; “Appellant’s
abstract test is deficient – not only in denying
Serial No. 77035443
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consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute.”]. Rather, the question is whether
someone who knows what the goods are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
In addition to considering the applied-for mark in
relation to the goods or services for which registration is
sought, the proper test for descriptiveness also considers
the context in which the mark is used and the significance
that the mark is likely to have on the average purchaser
encountering the goods or services in the marketplace. In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
Hence, the ultimate question before us is whether the
composite designation conveys information about a
significant feature or characteristic of applicant’s
services with the immediacy and particularity required by
the Trademark Act.
Serial No. 77035443
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A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted) In re Gyulay, 3 USPQ2d at 1009; In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
The Trademark Examining Attorney has placed into the
record dictionary entries and websites of various health
clubs from around the country:
gym·na·si·um
1 a: a large room used for various indoor sports (as basketball, boxing or
volleyball) and usually equipped with gymnastic apparatus b: a building (as on a
college campus) … 2

gym
gym [ jim ] (plural gyms)
noun
Definition:
1. ( informal )
Same as gymnasium
2. physical education: physical education, especially as a school subject (
informal )

2 WEBSTER’S NEW COLLEGIATE DICTIONARY, 1977.

Serial No. 77035443
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3. child's climbing structure: a sturdy metal or hard plastic frame designed for
children's outdoor play and exercise ( often used in combination )
[Late 19th century. Shortening]3

24/7
24/7 [ twèntee fawr sévvən ]
adverb
Definition:
all time: constantly or around the clock now open 24/7
adjective
Definition:
happening all time: occurring, happening, or appearing 24 hours a day, 7
days a week4

What does 24/7 stand for?
24 Hours a Day, 7 Days a Week5

Hyatt opens 24/7 gyms in America
Wednesday, August 30 2006 @ 06:56 AM BST
Email Story | Print Story

Hyatt has opened its StayFit@Hyatt 24/7 gyms. Guests at properties across North America and the Caribbean
are now able to access the gyms, which feature state-of-the-art Life Fitness equipment, 24 hours a day, seven
days a week.
To celebrate the launch, celebrity fitness expert Gunnar Peterson hosted Hyatt's "Escape the Rat Race" Stay Fit
24/7 Challenge and shared tips on how business travelers can maintain their workout regimes while on the road.
The challenge kicked off with a tag-team fitness obstacle course at New York's South Street Seaport.
"My clients are always traveling and have demanding schedules, so my goal is to offer fitness strategies they can
employ no matter where they are or when they find time to exercise," says Gunnar Peterson, whose clientele
includes Jennifer Lopez, Penelope Cruz, Ben Affleck and Debra Messing.
"It's common for my clients to be working out late at night or before sunrise when on set, which is similar to what
other business travelers encounter when traveling across time zones or after a long day of meetings. That's why
the convenience of 24/7 facilities like StayFit@Hyatt gyms are ideal."
Gunnar Peterson is the expert when it comes to knowing the workout challenge woes that his clientele face while
they're on the road for business and/or on the set.
In fact, nearly one-half of travelers polled by USA Today felt that they were in worse shape because they lack the
time or the means to exercise properly during travel. However, it is possible to keep in shape while traveling with
Gunnar's simple travel fitness tips:
1. Schedule Your "Fitness Meeting": Maintain your wellness routines when on the road by planning ahead and
scheduling workout times as you would a business meeting. If it's in your PDA calendar, you'll be more inclined
to find the time for the gym. Be sure to plan ahead and ask about your hotel's fitness and dining offerings, and
pack your exercise clothes.
2. Find Your Rhythm: Got jet lag? Research has shown that exercise helps to reset circadian rhythms and is one
behavior to help your internal clock get back in sync. And when done earlier in the day, exercise can even help
you sleep better at night.
3. The Time Zone Challenge: Business travelers' workouts often suffer from the impact of crossing different time
zones as that can change their usual exercise schedules.
If you're not used to exercising early in the morning or late in the evening, try to stick as close to your normal
exercise schedule as you can, even if it means reducing the intensity of the workout because you have to be

3 http://encarta.msn.com/dictionary_/gym.html
4 http://encarta.msn.com/dictionary_/24%252f7.html

5 http://www.acronymfinder.com/24-Hours-a-Day%2c-7-Days-a-
Week-(24%2f7).html

Serial No. 77035443
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able to meet your work commitments. Also, the benefit of staying at a hotel with a 24-hour gym, like Hyatt's
StayFit@Hyatt 24/7 gym, is that it allows you the flexibility of working out whenever you need to.
4. Take 30: Make a deal with yourself to go to the gym for at least 30 minutes. Chances are, after 30 minutes,
you'll feel better and stay longer... especially if you know you're exercising off that client dinner you just
consumed.
5. Keep It Safe: Another advantage of a 24-hour hotel gym is the safety and convenience when in an unfamiliar
city. Runners can log their miles indoors on the treadmill in a climate-controlled, secure environment, especially if
you want to run in the dawn or dusk hours. If you are more familiar with the neighborhood, but may need a little
assistance, StayFit@Hyatt gyms provide GPS-tracking that not only monitors your heart rate, but also helps
guides you back to the hotel to avoid getting lost.
6. Exercise Experimentation: If you don't have a gym membership at home, take advantage of your hotel gym
facility and experiment with new routines that you would not get to do otherwise. You may even adopt a new love
for fitness!
7. If You Can't Beat 'Em, Join 'Em: Consider moving your business meeting into the gym! There's a growing
trend of business meetings at the gym, so why not kill two birds with one stone? It's the healthier version of the
business meal or cocktails. Hey, it's just an idea!
8. Make sure you hydrate: You're losing water while you read this! To get the most out of your workout and the
most out of your business, I want you to think about keeping your tank on full.
The "Escape the Rat Race" competition was modeled after obstacles business professionals can encounter
while traveling. Each team went through a series of travel fitness scenarios as they raced against the clock to be
crowned "the most fit business travelers." Scenarios included: sprinting through the airport when their departure
gate has been changed, crunches to keep their waistline slim after an over-indulgent client dinner and climbing
the stairs when the elevator is out and the meeting is on the tenth floor. The winning participants each received a
$1,000 Hyatt gift card, and all competitors received Samsonite black label Pro-DLX business essentials travel
bags.
"At Hyatt, we understand the stress of business travel and the importance of upholding one's daily routine even
when away from home," says Gordon Tareta, assistant vice president of spas for Hyatt Hotels & Resorts. "Now,
with 24/7 StayFit@Hyatt gyms, no matter what time guests arrive at their hotel, they can still enjoy the great
workout they have at home and have access to state-of-the-art Life Fitness equipment anytime, any day."
Hyatt has also been nominated at this year’s World Travel Awards in the category of World's Leading Hotel
Brand. 6

24 Hour Fitness Centers, Gyms or Health Clubs | Fremont, California CA
7

“24-Hour Personal Training Studio”
What are you waiting for? ? ?
Welcome to GYM 24-7 where our motto is Getting You Motivated and our
goal is Getting You Results.

6 http://www.breakingtravelnews.com/article/20060830065606189

7 http://www.healthclubdirectory.com/health_clubs/clubResults/
CA/California/Fremont/24HourOperation

Serial No. 77035443
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We offer expert Personal Training Programs with 24-Hour Gym access
seven days a week. That's right, you get a key to your own personal gym,
GYM 24-7.8

Ace Fitness 24/7 Gym
3304 Williamson Rd NW
Roanoke, VA 24012
540-520-4324
9
Office Hours
Mon – Thur 12 – 7 pm
Friday 12 – 5 pm
Saturday 10 – 2 pm
Sunday CLOSED
The facility is available to members 24 hours/day 7 days/week. 10

Anytime Fitness Santa Rosa a 24/7 Gym for You11

8 http://www.gym24-7.com/

9 http://www.merchantcircle.com/business/Ace.Fitness.24.7.Gym.
540-520-4324

10 http://mygymcatoosa.com/index.html

11 http://www.guba.com/
Serial No. 77035443
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24/7 Gym Plus
1421 S. Dixie Fwy
New Smyrna Beach, FL 32168 12

13

12 http://yellowpages.daytona.com/

13 http://www.steelmillgym.com/
Serial No. 77035443
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14

14 http://www.customized-fitness.com/
Serial No. 77035443
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We agree with the Trademark Examining Attorney that
according to the evidence, the term “Gym” is readily-
understood terminology for a health club facility of the
type identified in this application.
Additionally, the evidence shows that the designation
“24/7” is known to mean “all the time.” In this context, we
find that this term is used routinely in connection with gym
services in order to communicate to current and prospective
customers the fact that the involved services are always
available to users of the facility. We have seen from the
evidence of record that there are “24/7” gyms that are
actually open around the clock. Accordingly, it is
difficult to accept the argument that potential customers
would not construe “24/7” literally in this context.
As to the combination of these two components, the
composite provides no new connotation and contains no
incongruity. Rather, it directly informs that its health
club and rehabilitation services are always available. In
fact, we agree with the Trademark Examining Attorney that it
is unlikely that this combination, “GYM 24/7,” would even be
understood by applicant’s customers to be a source
identifier.
Serial No. 77035443
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In the alternative, Deceptively misdescriptive under Section
2(e)(1)

Alternatively, in the event that applicant’s facilities
are not available to members twenty-four hours a day, seven
days a week (and the Trademark Examining Attorney was unable
to clarify this issue), then the term is deceptively
misdescriptive. Reasonable purchasers of these services
would find it plausible that these services are available
around the clock inasmuch as the evidence of record
demonstrates that some health clubs are available 24/7.
Decision: The Trademark Examining Attorney’s refusal
to register the designation on the ground that it is
merely descriptive of the recited services under Section
2(e)(1) of the Lanham Act is hereby affirmed. In the
alternative, in the event that applicant’s services are not
offered all the time, this term is refused registration on
the ground that it is deceptively misdescriptive of the
recited services, also under Section 2(e)(1) of the Act.