Rubie's Costume Co., Inc.

Trademark Trial and Appeal Board

Sep 26, 2000

No. 75410355 (T.T.A.B. Sep. 26, 2000)

Paper No. 9
RLS/TW
9/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Rubie’s Costume Co., Inc.
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Serial No. 75/410,355
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Barry E. Negrin of Levisohn, Lerner, Berger & Langsam for
Rubie’s Costume Co., Inc.
Kimberly Krehely, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
Before Simms, Cissel and Rogers, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Rubie’s Costume Co., Inc. (applicant), a New York
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark RUBIESILK
for fabric used in the manufacture of masquerade costumes.1
The Examining Attorney has refused registration under

1 Application Serial No. 75/410,355, filed December 23, 1997,
based upon allegations of use and use in commerce since November
30, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/410,355
2
Section 2(a) of the Act, 15 U.S.C. § 1052(a), arguing that
applicant’s mark is deceptive as applied to its goods.2
Applicant and the Examining Attorney have submitted briefs,
but no oral argument has been requested.3
We affirm.
In In re Budge Manufacturing Co. Inc., 857 F.2d 773, 8
USPQ2d 1259, 1260 (Fed. Cir. 1988), the U.S. Court of
Appeals for the Federal Circuit stated its agreement with
the standard set out by the Board in In re Shapely, Inc.,
231 USPQ 72, 73 (TTAB 1986):
(1) Is the term misdescriptive of the character,
quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to
believe that the misdescription actually describes the
goods?
(3) If so, is the misdescription likely to affect the
decision to purchase?
Applicant argues that its mark is not misdescriptive of its
fabric, contends that prospective purchasers are not likely

2 Section 2 of the Act, 15 USC §1052, provides, in part:
No trademark by which the goods of the
applicant may be distinguished from the
goods of others shall be refused
registration on the principal register on
account of its nature unless it—-
(a) Consists of or comprises
immoral, deceptive, or
scandalous matter…
3 The Examining Attorney has objected to the material submitted
with applicant’s appeal brief. To the extent that this material
has not previously been introduced or referred to by applicant,
Ser. No. 75/410,355
3
to believe that its goods are composed of silk, and does
not believe that any misdescription in its mark is likely
to affect the decision to purchase. Applicant states that
its fabric sold under the mark is incorporated into
finished costumes and that those completed costumes are
sold as a RUBIE’S costume with RUBIESILK fabric.
Applicant’s attorney states that applicant is the world’s
largest manufacturer of Halloween and masquerade costumes
and accessories. According to applicant, its costumes are
inexpensive ($20 to $30 at most), in contrast to genuine
silk costumes, which are more expensive. Applicant argues
that, in view of the price of its costumes, potential
purchasers are not likely to believe that they are
purchasing genuine silk costumes. Rather, according to
applicant, potential purchasers will believe that the
costumes sold under the mark are made from fabric that
simulates silk.
Applicant also contends that its masquerade costumes
are, by their very nature, imitations providing an
appearance of some real or imaginary character, person or
animal. For this reason as well, applicant maintains that

the Examining Attorney’s objection is sustained. See Trademark
Rule 2.142(d) and TBMP §§ 1207.01 and 1207.03.
Ser. No. 75/410,355
4
consumers will not believe that applicant’s goods are made
of real silk.
Finally, applicant contends that the prefix “RUBIES”,
argued to be the dominant part of applicant’s mark, informs
consumers that applicant’s goods are not real silk but only
a silky fabric from Rubie, the owner of a number of
registrations which begin with this prefix. Applicant
states that, in the two years its goods have been sold
under this mark, it is unaware of any instances where
consumers have believed that the fabric was made of silk.
We agree with the Examining Attorney, however, that
applicant’s mark is deceptive within the meaning of Section
2(a).
“Silk” is defined as “a fine, lustrous fiber composed
mainly of fibroin and produced by certain insect larvae to
form cocoons, especially the strong, elastic, fibrous
secretion of silkworms used to make thread and fabric…
Thread or fabric made from this fiber… A garment made from
this fabric.” The American Heritage Dictionary
(3Rd Edition). See Final Refusal, p. 2. The Examining
Attorney has made of record evidence that costumes, such as
a French maid’s costume, and even Halloween costumes, are
sometimes made of silk. The Examining Attorney has also
made of record evidence that the price of silk has dropped
Ser. No. 75/410,355
5
in recent years due to mass production in China and
evidence that that country has increased its production of
silk garments and costumes.
Applicant has admitted that its goods are not made of
silk but is “a material which [applicant] believes
masquerades as and feels like silk.”. Applicant’s brief,
p. 5 and applicant’s Response, filed February 9, 1999, p.
2. With respect to the commercial impression created by
applicant’s mark, the Examining Attorney has pointed to the
specimens of record (shown below) wherein the suffix “SILK”
is shown with a capital “S”. We agree with the Examining
Attorney that this display encourages the impression that
applicant’s fabric is composed of silk—-that the silk comes
from Rubie. We also believe that the evidence of record
shows that it would be reasonable for potential purchasers
to believe that applicant’s masquerade costumes, even
relatively inexpensive ones, are composed of silk, either
completely or in part. Further, because of the desirable
characteristics of silk, the fact that the purchasing
Ser. No. 75/410,355
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public may believe that applicant’s goods are composed of
silk would materially affect their decision to buy. See In
re Shapely, Inc., supra (“SILKEASE” held deceptive for
women’s blouses and ladies’ dresses made of polyester crepe
de chine). It is also noteworthy what the Board stated
therein, at 75, concerning the fact that other terms
containing the word “SILK” may have been registered by
others (an argument raised by applicant herein).
Moreover, even if the Office has -–
perhaps improvidently -- issued
registrations of marks containing
the term “silk” for goods not made
of silk in circumstances like those
presented here, we are not bound by
those actions if we believe that
registration in the case before us
would be contrary to the statute.
Decision: The refusal of registration is affirmed.
R. L. Simms
R. F. Cissel
G. F. Rogers
Administrative Trademark Judges
Trademark Trial and Appeal Board