Seaport Hotel, LP

Trademark Trial and Appeal Board

May 16, 2001

No. 75585779 (T.T.A.B. May. 16, 2001)

5/16/01
Paper No. 9
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Seaport Hotel, LP
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Serial No. 75/585,779
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David B. Bernstein of Mintz Levin Cohn Ferris Glovsky and
Popeo P.C. for Seaport Hotel, LP.
Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
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Before Walters, Wendel and Drost, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Seaport Hotel, LP has filed an application to register
the mark CHEFS IN SHORTS for “charitable fund raising” in
Class 36 and “charitable food and beverage services,
namely, preparation and providing food and beverages to
donors of charitable funds” in Class 42.1
1 Serial No. 75/585,779, filed November 9, 1998, claiming a first
use and first use in commerce date of June 1, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/585,779
2
Registration has been finally refused under Section
2(e)(1) on the ground that the mark, when used in
connection with the recited services, is merely descriptive
thereof. The refusal has been appealed and applicant and
the Examining Attorney have filed briefs. An oral hearing
was not requested.
The Examining Attorney maintains that the mark CHEFS
IN SHORTS is merely descriptive of a significant feature or
attribute of applicant’s services, in that the chefs wear
shorts while providing food and beverages to donors of
charitable funds. To demonstrate that this is a
highlighted feature of applicant’s services, the Examining
Attorney has made NEXIS articles of record, such as the
following:
... 14 of the best-known chefs in and around Boston
shed their trademark whites for shorts during,
appropriately, “Chefs in Shorts,” a fund-raiser held
to benefit the local chapter of the Chefs
Collaborative 2000.
Nation’s Restaurant News (September 14, 1998).
Applicant argues that while CHEFS IN SHORTS may be
descriptive of the clothing worn by the food service
professionals, the mark is in no way descriptive of the
particular services being provided. Applicant argues that
although the mark might well be descriptive with respect to
an informal theme restaurant in which the chefs wore short
Ser No. 75/585,779
3
pants, CHEFS IN SHORTS is not informative to consumers as
to the nature of the charitable fundraising services with
which it is actually being used.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
or services with which it is being used. See 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 or services 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 or services bearing the designation, because of the
manner in which it is used. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary that the
term or phrase describe all the characteristics or features
of the goods or services in order to be merely descriptive;
it is sufficient if the term or phrase describes one
significant attribute thereof. See In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
We find the phrase CHEFS IN SHORTS merely descriptive
of a highlighted feature of applicant’s fund-raising
Ser No. 75/585,779
4
services. These are charitable events at which food and
beverages are provided by “chefs in shorts.” As noted
above, to be merely descriptive the phrase need not provide
information with respect to each and every characteristic
of the services, the pinpointing of one distinctive feature
is sufficient. Here the fact that the chefs appear in
shorts is clearly a significant feature of the fund raising
events and is promoted as such, as shown by the NEXIS
evidence. The informational content of the phrase would be
immediately grasped by prospective donors.
Furthermore, as has often been stated, the
descriptiveness of a term or phrase is not determined in a
vacuum, but in relation to the goods or services with which
the term or phrase is being used. The question is not
whether consumers, upon encountering CHEFS IN SHORTS, would
comprehend the nature of the services with which it is
being used. Instead, the question is whether consumers,
upon seeing CHEFS IN SHORTS being used in connection with
charitable services, would immediately comprehend the
informational significance of the phrase. We are convinced
that consumers would immediately understand the
significance of CHEFS IN SHORTS, i.e., that this is a
charitable funding-raising activity featuring “chefs in
shorts.”
Ser No. 75/585,779
5
Accordingly, we find CHEFS IN SHORTS merely
descriptive when used in connection with applicant’s
charitable fund raising activities and charitable food and
beverage services.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
Ser No. 75/585,779
6