Roark Licensing, LLC

Trademark Trial and Appeal Board

May 9, 2008

No. 78827895 (T.T.A.B. May. 9, 2008)

Mailed: 5/9/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Roark Licensing, LLC
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Serial No. 78827895
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Daniel N. Lundeen of Lundeen & Dickinson for Roark
Licensing, LLC.

Leigh Caroline Case, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Roark Licensing, LLC to
register the mark MONGOLIAN for “wind chimes” in
International Class 20.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when used

1 Application Serial No. 78827895, filed March 2, 2006, alleging
first use anywhere in September 1989, and first use in commerce
in January 1992.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78827895
2
in connection with applicant’s goods, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that MONGOLIAN is
merely descriptive of applicant’s wind chimes that utilize
the notes of the Mongolian musical scale. In support of
the refusal, the examining attorney submitted excerpts of
third-party websites, as well as the website of applicant.
Applicant states that its chimes produce random
melodies when exposed to the wind, sounding out notes
without a set rhythm or order of tomes according to the
direction and force of the wind as the clapper is driven by
the sail and meets an individual metal tube. The mark,
applicant argues, is, at most, suggestive as applied to the
goods. In this regard applicant contends that there is no
specific scale understood as specific notes representing a
Mongolian scale. Rather, the mark suggests exotic locales,
adventure travel in Asia, the outdoors and historical
figures such as Genghis Kahn and his empire. In support of
its position, applicant introduced excerpts of websites and
the results summary of a search using Google’s search
engine. Applicant also submitted, pursuant to the
Ser No. 78827895
3
examining attorney’s request, information about its
product.
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. In re Abcor Development, 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; rather, it is sufficient
that the term describes one significant attribute, function
or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ
338 (TTAB 1973). 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
the goods or services, and the possible significance that
the term would have to the average purchaser of the goods
or services because of the manner of its use; contrary to
the gist of a portion of applicant’s argument, that a term
may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
Ser No. 78827895
4
(TTAB 1979). 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).
The “average” or “ordinary” consumer is the class or
classes of actual or prospective customers of applicant’s
goods or services. In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
We begin by noting applicant’s own statement in its
response dated February 21, 2007:
The tubes of the wind chimes admittedly
utilize the notes of the Mongolian
musical scale, and even describe the
scale in the sales literature, however,
the mark sought to be registered is
MONGOLIAN, not MONGOLIAN SCALE or
MONGOLIAN MUSICAL SCALE. (emphasis
added).

Applicant’s website includes information about “Chime
Tunings” and “Musical Scales.” Applicant states, “[O]ur
founder, Larry Roark, designed our chimes in a variety of
musical scales so you could choose the one that sings most
sweetly to you.” Applicant indicates that its chimes are
available in ten musical scales, including “Mongolian,”
“Pentatonic,” “Chinese,” Hawaiian” “Whole Tone” and
Ser No. 78827895
5
“Quartal.” The “Mongolian scale” is described as “a
livelier version of the Chinese” and is “reminiscent of
church and temple bells.” In a description of its product
appearing on the website www.amazon.com, applicant states:
The major pentatonic scale in root
position in the key of A, it harmonizes
nicely with the Aquarian
scale...Musicians are impressed with
the use of authentic musical scales
from around the world. The less
knowledgeable just know they sound
great. All chimes are precision tuned
to A 440, the standard orchestral
pitch. They are available in the
musical scales indicated and are
written in the octave of the alto size.
Sopranos are one octave higher; mezzo
sopranos, one-half octave higher;
tenors, one-half octave lower; and
basses, one octave lower. (emphasis
added)

The examining attorney’s evidence includes evidence
showing use of “Mongolian scale” in connection with tuning
mandolins (www.musicianuniversity.com); a listing for
“Mongolian,” among hundreds of others, in “Music Scales
Dictionary” (www.scales.se/f_list.htm);2 “wind chimes in the

2 Websites from English language, foreign sources may be relevant
to determine if a mark is merely descriptive. Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir.
2007) [“information originating on foreign websites...may be
relevant to discern United States consumer impression of a
proposed mark”]. We also have considered the results summary
generated by Google’s search engine. We note that some websites
appear to show use of “Mongolian” as a trademark for applicant’s
goods, while others show use in connection with a type of music.
We hasten to add that, without the entire websites relied upon,
Ser No. 78827895
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Mongolian scale” (www.thefind.com); and “[t]he Mongolian
tuning is reminiscent of church and temple bells”
(www.outdoordecor.com).
Based on the evidence of record, we conclude that the
term “Mongolian” is the name of a music scale, and that
MONGOLIAN merely describes applicant’s wind chimes. The
term immediately describes, without conjecture or
speculation, a significant characteristic or feature of the
goods, namely, that the wind chimes utilize the notes of
the Mongolian music scale. Applicant admitted this fact,
as noted above, and, contrary to applicant’s argument, that
applicant’s mark does not include the terms SCALE or
MUSICAL SCALE does not diminish the descriptiveness of
MONGOLIAN standing alone.
As pointed out by the examining attorney, that
applicant may be the first and only user of a merely
descriptive term does not justify registration if the only
significance conveyed by the term is merely descriptive.
See In re National Shooting Sports Foundation, Inc., 219
USPQ 1018 (TTAB 1983).
Decision: The refusal to register is affirmed.

the search engine results summary merits little probative value.
See In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002).