Point Noir Pty Ltd

Trademark Trial and Appeal Board

Dec 12, 2008

No. 78588436 (T.T.A.B. Dec. 12, 2008)

Mailed:
December 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Point Noir Pty Ltd
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Serial No. 78588436
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Bradley M. Ganz of Ganz Law, P.C., for Point Noir Pty Ltd.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
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Before Hairston, Bergsman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Point Noir Pty Ltd, applicant herein, seeks
registration on the Principal Register of the mark “FOOT
THONG,” in standard character format, for goods ultimately
identified as “footwear for dance and ballet,” in
International Class 25.1 The trademark examining attorney

1 Serial No. 78588436, filed on March 16, 2005, under Trademark
Act Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a),
alleging dates of first use and first use in commerce of June 8,
1998.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78588436
2
refused registration on the ground that applicant’s mark is
merely descriptive of the identified goods under Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).2 Both applicant
and the examining attorney filed briefs. After careful
consideration of all of the arguments and evidence of
record, we affirm the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose 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). Whether a term 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 on or in connection with those goods
or services, and the possible significance that the term

2 After receiving a final office action refusing registration of
the proposed mark as merely descriptive, applicant sought an
amendment to register it on the Supplemental Register. However,
the examining attorney then issued a genericness refusal, and
applicant withdrew its proposed amendment. The examining
attorney again issued a final refusal to register on the
Principal Register on the ground that applicant’s proposed mark
is merely descriptive. In its reply brief, applicant asked us to
rule on whether applicant’s mark is generic. Since that ground
was not raised in the final refusal however, it is not before us
Ser. No. 78588436
3
would have to the average purchaser of the goods or
services because of the manner of its use. That a term may
have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Moreover, it is settled that “[t]he question
is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002);
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
We consider a composite mark in its entirety. The
composite is registrable only if as a unitary mark it has a
separate, non-descriptive meaning. In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR
& SPICE not merely descriptive of bakery products). Thus,
we consider whether the words “FOOT THONG” have a
descriptive meaning as a unitary phrase. We have taken
judicial notice of the relevant portions of the dictionary

and therefore we cannot render a decision as to whether “FOOT
THONG” is generic.
Ser. No. 78588436
4
definitions of the separate words “foot,” and “thong.”3 The
examining attorney has also submitted a dictionary
definition of the composite, “foot thong.”
Definitions:
“Foot”: Noun 1. The lower extremity of the vertebrate
leg that is in direct contact with the ground in
standing or walking . . . 3. Something suggestive of a
foot in position or function . . . 5. The part of a
stocking or high-topped boot that encloses the foot.
Intransitive verb . . . 2. To dance.
American Heritage Dictionary of the English Language
(4th ed. 2000).

“Thong”: Noun 1. A narrow strip . . . 3. A sandal held
on the foot by a strip that fits between the first and
second toes and is connected to a strap, usually
passing over the top or around the sides of the foot.
American Heritage Dictionary of the English Language
(4th ed. 2000).

“Foot thong”: Dance shoe that only protects the ball
of the foot. It has little straps that run between
the toes, hence the fabulous name – FOOT THONG! Urban
Dictionary. (www.urbandictionary.com)

The examining attorney argues that “FOOT THONG” in
relation to applicant’s identified goods would be perceived
by consumers as indicating a feature or characteristic of
the goods, namely, that they are dance shoes with a strap
between the toes. In addition to the dictionary definition
listed above for “foot thong,” the examining attorney
submitted evidence of third-party trademark applications

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser. No. 78588436
5
and advertisements that use the term “foot thong”
descriptively in discussing, promoting, or identifying the
nature of a footwear product. A sampling of the examining
attorney’s evidence includes the following:
Third Party Applications:
BUSHWACKERS, Appl. No. 74317021, filed 9/25/92, for
“clothing articles, namely, sweatshirts, T-shirts,
slippers, cape, hats, tank tops, foot thongs . . . ” in
International Class 25 (abandoned).

FABULOUS FEET, Appl. No. 77118933, filed 2/28/07, for
“Gel and foam insoles and other products for footwear and
footcare, namely, heel cushions, ball of foot cushions, gel
spots, gel strips, gel insoles, foam insoles, gel foot
thongs . . . “ in International Class 25 (abandoned).

Advertisements:

Foot Thong: Suede sole pad provides protection for the
ball of your foot. Gives the illusion of barefoot dancing
while protecting the ball of your foot. Elastic strap
across the top of foot provides a snug fit. Dance 4 Less.

Foot Thong Dance Shoe: Foot thong: Modern dancers need
to protect the skin on the ball of their feet. Yet they do
not like the look of a shoe. This product is as close to
invisible as possible and is extremely comfortable and
efficient. The Movement Connection, Inc.

Capezio “Footundeez” foot thong: Women’s “Footundeez”
leather/mesh foot thongs. Barry’s Capezio.

While applicant admits that the word “thong” describes
“a casual, flimsy sandal,” (Applicant’s Brief at 10),
applicant argues that the mark is suggestive, rather than
merely descriptive, when applied to footwear for dance and
ballet. Furthermore, applicant argues against giving undue
Ser. No. 78588436
6
weight to the dictionary definition of “foot thong”
submitted by the examining attorney. However, we view
dictionary definitions, as we view the other evidence, to
show the relevant public’s understanding of the term “foot
thong.” The record overwhelmingly demonstrates that the
relevant public perceives the term “foot thong” as
indicating a type of product, consisting of footwear with a
strap between the toes, including footwear for dance or
ballet. Accordingly, consumers would require no
imagination to arrive at the understanding that applicant’s
proposed mark refers to a feature of its product.
Applicant’s other argument that the evidence of the term
“foot thong” actually refers to applicant’s own mark falls
flat, since the record shows that the term is used by
various third parties without trademark notation or source
attribution, including as an identifying term within third-
party trademark applications.
The primary purposes for refusing registration of a
merely descriptive mark are “(1) to prevent the owner of a
mark from inhibiting competition in the sale of particular
goods; and (2) to maintain freedom of the public to use the
language involved, thus avoiding the possibility of
harassing infringement suits by the registrant against
others who use the mark when advertising or describing
Ser. No. 78588436
7
their own products.” In re Abcor, 200 USPQ at 217. It
would be difficult for competitors to describe this
apparently common feature of their own footwear, including
footwear for dance and ballet (i.e., that it is a thong for
a foot) if applicant were allowed to register “FOOT THONG.”
In sum, it is clear that a consumer would understand
“FOOT THONG” used in connection with applicant's goods as
conveying information about them. See In re Tower Tech
Inc., 64 USPQ2d at 1316-17; see also In re Conductive
Services, Inc., 220 USPQ 84, 86 (TTAB 1983). Therefore we
find that the mark is merely descriptive of the identified
goods. Accordingly, we affirm the refusal to register.
Decision: The refusal to register under Trademark Act
Section 2(e)(1) is affirmed.