Republic Tobacco L.P.

Trademark Trial and Appeal Board

Sep 18, 2001

No. 75657359 (T.T.A.B. Sep. 18, 2001)

9/18/01

Paper No. 9
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Republic Tobacco L.P.
________

Serial No. 75/657,359
_______

Antony J. McShane of Katten Muchin & Zavis
for Republic Tobacco L.P.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______

Before Hairston, Wendel and Rogers, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

Republic Tobacco L.P. has filed an application to
register TOBACCO WRAPS for “cigarette rolling papers made
with tobacco leaves.”1
Registration has been finally refused under Section
2(e)(1) on the ground that the mark, if used in connection
with applicant’s goods, would be merely descriptive
thereof. The refusal has been appealed and applicant and

1 Serial No. 75/657,359, filed March 10, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/657,359
2
the Examining Attorney have filed briefs. An oral hearing
was not requested.
As a preliminary matter, the Examining Attorney has
objected to the copies of third-party registrations which
applicant has attached to its brief as being untimely new
evidence under Trademark Rule 2.142(d). Applicant contends
that it is simply curing the defect previously pointed out
by the Examining Attorney when applicant submitted only
listings of the registrations. Applicant requests that the
copies be considered as acceptable versions of evidence
previously submitted. In the alternative, applicant
requests that the Board suspend the appeal and remand the
case to the Examining Attorney for consideration of the
evidence.
The copies of the third-party registrations attached
to applicant’s brief in Exhibit B are clearly untimely
under Trademark Rule 2.142(d). Applicant could have timely
corrected the defect pointed out by the Examining Attorney
by filing the evidence as part of a request for
reconsideration.2 Applicant did not avail itself of this
opportunity and accordingly the evidence in Exhibit B will

2 We also note that the third-party registrations of Exhibit B to
the brief cover more than the marks earlier noted by applicant,
the “WRAP” registrations not having been previously listed.
Ser No. 75/657,359
3
be given no consideration.3 Applicant’s alternative request
for a remand is denied, there being no good cause therefor.
Turning to the refusal under Section 2(e)(1), the
Examining Attorney argues that the term TOBACCO WRAPS, when
used in connection with applicant’s cigarette rolling
papers made of tobacco, merely describes a feature of and a
use for the goods. In the first place, the Examining
Attorney argues, the term merely describes applicant’s
goods as a “wrap” made of tobacco leaves used to roll and
enclose “tobacco.” Or, looking at the term in another way,
the term merely describes the goods of applicant as
cigarette rolling “wraps” made of “tobacco.” The
Examining Attorney has introduced dictionary definitions of
the terms “tobacco” and “wrap” to support his refusal,4 as
well as evidence both from the NEXIS database and the web
page of a competitor of the use of the term “wrap” to
describe tobacco or cigar rolling materials.

3 We would add that, even if this evidence had been considered,
our decision would be the same.

4 The definitions relied upon by the Examining Attorney are as
follows:
tobacco any of the various plants of the genus
Nicotiana, especially N. tabacum, native to
tropical America and widely cultivated for its
leaves, which are primarily used for smoking.
wrap n. wrapping or wrapper
v. to enclose, especially in paper, and fasten.
All definitions come from The American Heritage Dictionary of the
English Language (3rd ed. 1992).
Ser No. 75/657,359
4
Applicant argues that thought and imagination are
necessary to determine the specific nature of the goods
with which applicant uses the mark TOBACCO WRAPS.
Applicant contends that the combination of the two
descriptive words TOBACCO and WRAPS does not result in a
combination which is merely descriptive but rather one
which creates ambiguity and thus requires thought and
perception on the part of the public. Applicant insists
that WRAP brings to mind various connotations, either that
of the “contemporary fascination with wrapped foods,” or
that of the superiority of cigars over cigarettes, since
the term “wrapper” has long been used for the finishing
leaf for cigars, or that of the method of use of the
object. The term TOBACCO is argued to also raise
conflicting impressions since cigarette rolling papers are
conventionally made of wood pulp paper, whereas applicant’s
products are made substantially of processed tobacco
leaves. As a whole, applicant argues that TOBACCO WRAPS
requires the public to use some thought to decide whether
it refers to qualities of the papers themselves or to the
materials being rolled.
In addition, applicant argues that the Examining
Attorney has failed to provide evidence that “tobacco
wraps” has been used descriptively for cigarette rolling
Ser No. 75/657,359
5
papers. Applicant insists that the only uses shown by the
Examining Attorney, particularly that of the use by a
competitor, relate to cigar wrappers, not cigarette rolling
papers.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic, function, feature or
use of the goods with which it is being used or is intended
to be used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir 1987); In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). Whether or not a particular
term or phrase is merely descriptive is determined not in
the abstract, but rather in relation to the goods for which
registration is sought, the context in which the
designation is being used, and the significance the
designation is likely to have to the average purchaser as
he or she encounters the goods bearing the designation,
because of the manner in which it is used. See In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
We find the dictionary definitions relied upon by the
Examining Attorney sufficient in themselves to establish
the descriptiveness of TOBACCO WRAPS, when used in
connection with cigarette rolling papers made with tobacco
leaves. In one sense, the “wraps” are wrappers used to
Ser No. 75/657,359
6
enclose other material and this other material is
“tobacco,” thus, they are “wraps” for “tobacco.” In
another sense, the “wraps” are themselves made of “tobacco”
and thus are “tobacco wraps.” Either way, the term TOBACCO
WRAPS is merely descriptive of applicant’s goods. Simply
because the term may convey information with respect to
applicant’s goods in two ways does not detract from the
descriptive nature of the term or render the term
ambiguous. See In re Bed & Breakfast Registry, 791 F.2d
157, 229 USPQ 818 (Fed. Cir. 1986) (affirming refusal based
on Board’s conclusion that BED & BREAKFAST REGISTRY “would
be understood to describe a register of bed and breakfast
lodgings, and may convey the related thought of registering
at a bed and breakfast lodging.”); In re Vehicle
Information Network Inc., 32 USPQ2d 1542 (TTAB 1994)(“as to
each of these possibilities, the words sought to be
registered would be immediately understood to convey
information concerning the nature of the services.”).
Furthermore, as has often been stated, the
descriptiveness of a term is not determined in a vacuum,
but in relation to the goods with which the term is being
used, or is intended to be used. The question is not
whether consumers, upon encountering the term TOBACCO
WRAPS in itself, would fully comprehend the nature of the
Ser No. 75/657,359
7
goods with which it is intended to be used. Instead, the
question is whether consumers, upon seeing TOBACCO WRAPS
being used in connection with cigarette rolling papers made
with tobacco leaves, would immediately comprehend the
informational significance of the term. We are convinced
that consumers would immediately understand the descriptive
significance of TOBACCO WRAPS when viewed in connection
with applicant’s goods, whether as describing the cigarette
papers as “wraps” for “tobacco” or as “wraps” made of
“tobacco.” No thought or imagination is necessary to make
this correlation.
Finally, even if there were no evidence of use of the
term “tobacco wraps” by others in the field for cigarette
rolling papers, this would not be dispositive where, as
here, the term unquestionably projects a merely descriptive
connotation. See In re Polo International Inc., 51 USPQ2d
1061 (TTAB 1999). Moreover, we find that there is some
evidence of record of use of the term by at least one
competitor. Although it is true that the excerpts from the
NEXIS database all refer to tobacco being used for “cigar
wraps,”5 the web page introduced by the Examining Attorney

5 We have considered the full version submitted by applicant of
the excerpt relied upon by the Examining Attorney with respect to
the usage of “metallized paper for a cigarette wrap” and agree
that when taken in proper context this reference is to a wrap
used to package the cigarettes within the individual packs and
Ser No. 75/657,359
8
does contain references to an “all natural tobacco wrap”
and to the use of this wrap for “hand-rolling their
favorite tobaccos or [to] creatively roll their own cigars,
without the harsh taste of paper.” As such, it would
appear that the use of a “tobacco wrap” for the rolling of
cigarettes, as well as cigars, has been contemplated by at
least one competitor.
Accordingly, we find TOBACCO WRAPS would be merely
descriptive, if used as intended with applicant’s cigarette
rolling papers made with tobacco leaves.
Decision: The refusal to register under Section
2(e)(1) is affirmed.

not to one for making the cigarette per se. As such this
reference is irrelevant.

Ser No. 75/657,359
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