Shimano North America Holding, Inc.

Trademark Trial and Appeal Board

Jun 24, 2020

88185338 (T.T.A.B. Jun. 24, 2020)

Mailed: June 24, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Shimano North America Holding, Inc.
————
Serial No. 88185338
————
Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP,
for Shimano North America Holding, Inc.
Christopher J. Nodes,1 Trademark Examining Attorney, Law Office 116,
Elizabeth Jackson, Acting Managing Attorney.
————
Before Cataldo, Pologeorgis, and Lebow,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Shimano North America Holding, Inc. (“Applicant”) seeks registration on the
Principal Register of the standard character mark FLAT-FALL for “Fishing lures;
Lures for fishing” in International Class 28.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

1 On January 3, 2020, the Office reassigned the prosecution of the involved application to the
above-identified examining attorney.
2 Application Serial No. 88185338, filed on November 7, 2018, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming July
2013 as both the date of first use and the date of first use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 88185338
2
the mark, in its entirety, is merely descriptive of the goods identified in Applicant’s
application.
When the refusal was made final, Applicant appealed and requested
reconsideration on three occasions. The last request was filed on the same day
Applicant filed its timely notice of appeal. When the requests for reconsideration were
denied, this appeal resumed. The appeal is fully briefed. For the reasons explained
below, we affirm the refusal to register.3
I. Preliminary Matter – Evidentiary Objection
We first turn to an evidentiary objection lodged by the Examining Attorney
regarding evidence presented by Applicant purportedly for the first time with its
appeal brief.4 Specifically, the Examining Attorney objects to the inclusion of Exhibit
A to Applicant’s Appeal Brief which consists of various definitions for the term “flat,”
ostensibly submitted to support Applicant’s argument that the definition of this term
does not describe Applicant’s goods.5
It is well-settled that the record in an ex parte proceeding should be complete prior
to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits or other evidentiary
material that are attached to or included with a brief but not made of record during
examination are untimely, and will not be considered. See In re Fitch IBCA, Inc., 64

3 All TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
4 Examining Attorney’s Brief, p. 11, 6 TTABVUE 12.
5 Id.
Serial No. 88185338
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USPQ2d 1058, 1059 n.2 (TTAB 2002); see also TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) §§ 1203.02(e) and 1207.01 (2020).
Here, however, the dictionary definitions submitted with Exhibit A to Applicant’s
brief were made of record during the examination of Applicant’s involved application.6
The only difference is that Applicant highlighted in yellow some of the definitions
contained in Exhibit A. The highlighting of the definitions, however, does not detract
from the fact that the dictionary definitions were previously submitted during the
prosecution of Applicant’s application. Accordingly, the Examining Attorney’s
evidentiary objection is overruled.7
II. Mere Descriptiveness – Applicable Law
A mark is merely descriptive of goods or services within the meaning of Section
2(e)(1) of the Trademark Act if it conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether
a mark is merely descriptive is determined in relation to the goods or services for

6 See April 29, 2019 Office Action, TSDR p. 16; October 4, 2019 Request for Reconsideration,
TSDR pp. 15-87.
7 Further, and as noted below, it is established that the Board may take judicial notice of
definitions from dictionaries, including online dictionaries that exist in printed format. E.g.,
In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018). As a result, even if
these definitions had not been introduced during prosecution of the involved application, they
represent one of the few exceptions to Trademark Rule 2.142(d) and could have been
submitted by Applicant or the Examining Attorney for the first time during briefing with a
request that the Board take judicial notice of the definitions.

Serial No. 88185338
4
which registration is sought and the context in which the mark is used, not in the
abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ2d 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
In other words, we evaluate whether someone who knows what the goods or services
are will understand the mark to convey information about them. DuoProSS Meditech
Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012). A mark need not immediately convey an idea of each and every specific feature
of the goods or services in order to be considered merely descriptive; it is enough if it
describes one significant attribute, function or property of the goods or services. See
In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982); In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. If each
component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs).
Serial No. 88185338
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On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363,
365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”). In this regard, “incongruity is one of the accepted guideposts in the
evolved set of legal principles for discriminating the suggestive from the descriptive
mark.” Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199 USPQ
496, 498 (TTAB 1978) (the association of applicant’s mark TENNIS IN THE ROUND
with the phrase “theater-in-the-round” creates an incongruity because applicant’s
services do not involve a tennis court in the middle of an auditorium). Thus, we must
consider the issue of descriptiveness by looking at Applicant’s mark in its entirety.
In determining how the relevant consuming public perceives Applicant’s mark in
connection with its identified goods, we may consider any competent source, including
websites and webpages, newspaper articles and publications, and Applicant’s own
advertising material and explanatory text. See In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d
157, 229 USPQ 818, 819 (Fed. Cir. 1986)); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) §1209.01(b) (October 2018).
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III. Arguments and Evidence
In support of the Section 2(e)(1) refusal, the Examining Attorney submitted the
dictionary definitions of the terms “flat” and “fall” set forth below:
• “flat” is defined as “having a continuous horizontal surface;” “being
or characterized by a horizontal line or tracing without peaks or
depressions” and “arranged or laid out so as to be level or even.”8

• “fall” is defined as “to descend freely by the force of gravity.”9

In addition, the Examining Attorney points to Applicant’s specimen of record
which describes the orientation of Applicant’s fishing lure during descent as
“flattened.” The specimen also shows that the packaging for the goods features a
diagram that depicts the trajectory of the fall of the lure through the water, showing
that, at a particular phase of the fall, the lure assumes a horizontal position. At this
phase of horizontal orientation, the diagram identifies the trajectory as “Jig
flattened.” The specimen also specifically states that “[t]he center balanced jig falls
with a wobbly action in a horizontal position, keeping the strike zone longer than

8 February 14, 2019 Office Action, TSDR p. 6 (accessed from www.merriam-webster.com on
February 13, 2019).
Also, the Examining Attorney submitted the dictionary definition of the term “flat” from the
Collins Dictionary (collinsdictionary.com/dictionary/english/) which defines the term as
“horizontal and not upright.” See April 29, 2019 Office Action, TSDR p. 16. We note that
Collins Dictionary offers a British and an American version. The entry submitted by the
Examining Attorney does not appear to be from the British version, which does not
necessarily evidence perceptions of the term by consumers in the United States. See In re
Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 n.18 (TTAB 2014) (finding such
definitions from the British version of the Collins Dictionary to be “of little or no probative
value”). Accordingly, we have considered the definition from the Collins Dictionary.
9 February 14, 2019 Office Action, TSDR p. 5 (accessed from www.merriam-webster.com on
February 13, 2019).
Serial No. 88185338
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the original butterfly jig.” (emphasis added). The Examining Attorney argues that
the packaging in which the Applicant’s goods are sold to consumers directly shows
that Applicant describes the horizontal orientation of the fish lure during its fall as
“flattened.” A copy of the specimen is reproduced below:10

In a signed declaration, Applicant’s product manager describes the motion of
Applicant’s jigs as a “fall.”11 Also, Applicant concedes that its lures fall through the

10 Applicant’s Specimen submitted with the application on November 7, 2018.
11 October 4, 2019 Request for Reconsideration, Declaration of Adam Lytton, Applicant’s
Product Manager, ¶ 2, TSDR p. 88 (“The jig is designed to ‘jerk’ or ‘wobble’ on both the fall
and the retrieve.”) (emphasis added).
Serial No. 88185338
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water12 and that its lures “may, at points during their descent through the water
column, achieve a ‘flattened’ position in the water … .”13
Additionally, a video in the record refers to the “free fall” of the jig right between
segments of the video in which the fish lure is shown to descend.14 The same video
shows Applicant’s fishing lure falling through the water with a wobbled action and,
at some point, achieving a horizontal orientation.15
The Examining Attorney also submitted various online articles discussing
Applicant’s goods as designed to employ a technique known as “slow pitch jigging”
stating that (1) “[t]he center balanced jig slides to the side and moves in the
horizontal position,” and (2) “it’s when the jig is on its side, the horizontal
position, and when the jig is falling, going downward, that it attracts most bites.”
(emphasis added). Applicant has admitted that its lures are typically used in slow-
pitch jigging.16
In addition, the evidence of record includes Internet articles from FISHFIGHT,
Gulf Coast Mariner Magazine, Searcher Sportfishing, and Premium Comfort that
refer to Applicant’s brand of lures which use the term “flat fall” descriptively. For
example:17

12 April 4, 2019 Response to Office Action, TSDR p. 6.
13 Applicant’s Appeal Brief, p. 2, 4 TTABVUE 4.
14 October 4, 2019 Request for Reconsideration, Exh, I.
15 Id.
16 Applicant’s Appeal Brief, p. 3, 4 TTABVUE 5.
17 October 4, 2019 Request for Reconsideration; TSDR pp. 98-116.
Serial No. 88185338
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• www.fishfight.com – “Take a closer look at how anglers are fishing
the flat-fall jig as well as the size and color preferences in the
following passages.” “While some lures tend to torpedo down or sink
eventually, the flat-fall almost sways from side to side. It can
torpedo momentarily but will catch an edge and return to the
butterfly-like pattern.”

• www.gulfcoastmariner.com - “The 200g and 250 flat fall jigs should
also be perfect for other Gulf species like amberjack, grouper and
tuna.”

• www.searchersportfishing.com – “In my experience, while the
original Shimano butterfly lure receives strikes about 50 percent of
the time on both the sink and retrieve, the flat-fall receives about 80
percent of strikes on the sink.” “The most common flat-fall mishap I
have seen is that someone will tie it on the end of their line, and a 40
plus pound bluefin will come along and bite it off.”

• www.premiumcomfort.com - “The action of the flat fall is what
makes it unique….Since the jig is balanced in the center, it will fall
with a wobbled action in a horizontal position, keeping it in the strike
zone longer and enticing hungry tuna. No other lure can match the
action of a flat fall.” “Targeting bluefin tuna with a flat fall jig…?
Luckily, you do not have to be an expert angler to catch fish on a flat
fall.”

Additionally, the Examining Attorney submitted evidence demonstrating that
third parties use the phrase “flat fall” descriptively to indicate a type of lure motion
for goods identical to those offered by Applicant under its applied-for mark. For
example:18

18 April 29, 2019 Office Action, TSDR pp. 19-35.
Serial No. 88185338
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Serial No. 88185338
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Serial No. 88185338
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Based on the foregoing evidence and concessions by Applicant, the Examining
Attorney concludes that when relevant consumers are confronted with Applicant’s
fishing lures, including the packaging in which they are sold, they will immediately
understand that the designation FLAT-FALL, when viewed in its entirety, merely
describes a significant feature of Applicant’s goods, namely, the lures trajectory
position, i.e., flattened or in a horizontal position, when falling or descending into the
water.
In challenging the refusal, Applicant argues that its FLAT-FALL mark is at least
suggestive and, as such, is entitled to registration on the Principal Register.19
Moreover, while conceding that its fishing lures do drop through the water, Applicant

19 Applicant’s Brief, p. 1, 4 TTABVUE 3.
Serial No. 88185338
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argues that the term “flat” does not describe their motion or position or position in
the water.20 Applicant further contends that if its FLAT-FALL mark were actually
descriptive, i.e., the wording immediately conveyed to consumers information about
the nature of the motion of Applicant’s FLAT-FALL branded lures, then neither a
diagram nor a written description of its lures on the product packaging would be
necessary.21
Applicant also argues that the Examining Attorney selected definitions of the
term “flat,” which has numerous meanings, from a variety of definitions in order to
support the descriptiveness refusal.22 In light of such multiple meanings, Applicant
maintains that its mark does not communicate, without further analysis, a clear
understanding of Applicant's goods.23 More specifically, Applicant contests the
Examining Attorney’s conclusion that the term “flat” is equivalent to the term
“horizontal.”24
Further, Applicant attempts to downplay the importance of its fishing lures’
“flattened position in the water,” claiming that the orientation is fleeting and “does
not properly describe the wobbling and jerking motion.”25 With regard to the Internet
articles submitted by the Examining Attorney, Applicant argues that these articles

20 Id. at p. 2, 4 TTABVUE 4.
21 Id.
22 Id. at pp. 3-5, 4 TTABVUE 5-7.
23 Id.
24 Id. at p. 5, 4 TTABVUE 7.
25 Id. at p. 2, 4 TTABVUE 4.
Serial No. 88185338
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specifically and explicitly refer to Applicant’s fishing lures and, given this context,
the use of the phrase “flat fall” or “flat-fall” in the articles does not reference a broad
category of lures; instead, the use of these terms are directly attributable to Applicant
and its fishing lures.26
With regard to the third-party uses of the term “flat-fall” of record, Applicant
maintains that these third-parties are mere infringers of its applied-for FLAT-FALL
mark and it has sent cease and desist letters to these entities.27 Applicant further
contends that while some of third-parties have failed to comply with Applicant’s cease
and desist demands, such failure is not evidence that Applicant lacks rights in its
FLAT-FALL mark.28
Finally, Applicant requests that the Board resolve any doubt as to whether
Applicant’s FLAT-FALL mark is descriptive in Applicant’s favor and allow the
application to proceed to publication.29
IV. Analysis
We are not persuaded by Applicant’s arguments. With regard to Applicant’s
argument that the term FLAT may have multiple meanings, that fact alone is
not controlling on the issue of whether Applicant’s composite mark is merely
descriptive of Applicant’s identified goods. In re Franklin Cnty. Historical Soc’y,

26 Id. at pp. 9-10, 4 TTABVUE 11-12.
27 Id. at pp. 11-12, 4 TTABVUE 13-14; see also October 22, 2019 Request for Reconsideration,
TSDR pp. 6-17 (copies of cease and desist letters).
28 Applicant’s Appeal Brief pp. 11-12, 4 TTABVUE 13-14.
29 Id. at 12-13, 4 TTABVUE 15-16.
Serial No. 88185338
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104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979)); TMEP § 1209.03(e). “It is well settled that so long as any
one of the meanings of a term is descriptive, the term may be considered to be
merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590
(TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
Here, the record includes the definition of the term “flat” which is defined as
“horizontal.”30 We take judicial notice of the dictionary definition of the term
“horizontal” which is defined as “flat or level.”31 Accordingly, the words “flat” and
“horizontal” are synonymous terms. When viewing the term “flat” in the context
of Applicant’s goods, it is clear that the term describes a feature of Applicant’s
fishing lures, namely, the trajectory of the lures during their descent into the
water. As shown above, Applicant’s own packaging touts the horizontal or flat
orientation of the lure as a significant feature of its goods which maintains the
“strike zone” of catching a fish for a longer period of time. Indeed, it is this
horizontal or flat orientation that Applicant claims distinguishes its fishing lures
from others. If the flat orientation of the Applicant’s lures were not a salient
feature of Applicant’s goods and only a “fleeting” orientation of the lures’
trajectory into the water, as Applicant contends, then there would be no reason
for Applicant to hype the flattened or horizontal orientation of its fishing lures in

30 See n.7, supra.
31 www.dictionary.com (based on Random House Unabridged Dictionary, 2020). As previously
noted, the Board may take judicial notice of dictionary definitions, including online
dictionaries. See, e.g., In re Omniome, Inc., 2020 USPQ2d 3222, *2 n.17 (TTAB 2020).
Serial No. 88185338
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its packaging or advertising materials. Moreover, the fact that Applicant does
promote the horizontal or flattened orientation on the packaging of its goods,
reinforces to the prospective purchaser of the goods that the term “flat” is a
descriptive feature of Applicant’s fishing lures. Further, Applicant has conceded
that the term “fall” describes a function of its goods.32 As such, we not only find
that the individual terms “flat” and “fall” are merely descriptive of Applicant’s
fishing lures, but the combination of these terms results in a composite mark that
is itself merely descriptive.
As noted, Applicant argues that the Internet websites of record refer
specifically to Applicant’s fishing lures and do not use the wording “flat fall”
descriptively, yet it appears that is exactly what the articles are doing. For
example, the above-referenced premiumcomfort.com website shows that a
webpage can refer to both Applicant’s fishing lures and use the term “flat fall” to
describe the motion or action of a type of lure. After describing the fall in detail
(“it will fall with a wobbled action in a horizontal position”), premiumcomfort.com
goes on to say that “[t]he action of the flat fall is what makes it unique” and “[n]o
other lure can match the action of a flat fall.”33 Additionally, the website
fishlight.com, in discussing Applicant’s fishing lures, states “[t]ake a look at how
anglers are fishing the flat-fall jig as well as size and color preferences in the

32 See n.10, supra.
33 October 4, 2019 Request for Reconsideration, TSDR p. 114.
Serial No. 88185338
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following paragraphs.”34 The article also states that “[w]hile some lures tend to
torpedo down or sink uneventfully, the flat-fall almost sways from side to side.”35
Most significantly, the article includes a hyperlink which states “View Flat Fall
Jigs On Amazon,”36 clearly employing the designation “flat fall” as a type of jig.
Further, to the extent that Applicant is arguing that it is the first user of the
designation FLAT-FALL for its identified goods, the fact that an applicant may
be the first or only user of a merely descriptive designation does not necessarily
render a word or term incongruous or distinctive; as in this case, the evidence
shows that FLAT-FALL is merely descriptive of the goods at issue. See In re Fat
Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon
Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Although Applicant argues that the third-parties using the phrase “flat fall” for
goods identical to those of Applicant are infringers and that it has taken action to
halt such alleged infringing use, it does not appear that Applicant, based on the
record, has been successful in enjoining third-parties from using the designation.
Even if the evidence did demonstrate that Applicant’s competitors may have agreed
to discontinue use of the designation “flat fall” or “FLAT-FALL” upon threat of legal
action by Applicant, such action may show a desire by those competitors to avoid
litigation, rather than demonstrating the distinctiveness of the wording. See In re

34 Id., TSDR p. 98.
35 Id., TSDR p. 100.
36 Id.
Serial No. 88185338
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Wella Corp., 565 F.2d 143, 196 USPQ 7, n.2 (CCPA 1977); In re Consolidated Cigar
Corp., 13 USPQ2d 1481, 1483 (TTAB 1989). Cf. In re Cree, Inc., 818 F.3d 694, 118
USPQ2d 1253, 1259 (Fed. Cir. 2016) (because it is cheaper to take a license than
defend a patent infringement action, licenses are often entered into to avoid
litigation).
Finally, the use of the hyphen between the terms FLAT and FALL does not obviate
a finding of mere descriptiveness. See e.g., In re Vanilla Gorilla, L.P., 80 USPQ2d
1637 (TTAB 2006) (finding that the presence of a hyphen in the mark “3-0’s” does not
negate mere descriptiveness of mark for automobile wheel rims).
V. Conclusion
We have carefully considered all arguments and evidence of record. Based on this
evidence, we conclude that the designation FLAT-FALL is merely descriptive of
Applicant’s identified goods since the mark merely describes a primary function or
characteristic of Applicant’s identified goods, namely, the lures trajectory position,
i.e., flattened or in a horizontal position, when falling or descending into the water.
We further find that the combination of the descriptive term “flat” with the
descriptive term “fall” does not create a non-descriptive or incongruous meaning.
Instead, we find that each component retains its merely descriptive significance in
relation to Applicant’s identified goods, the combination of which results in a
composite mark that is itself merely descriptive. Moreover, while Applicant correctly
states the general principle that any doubt as to descriptiveness must be resolved in
its favor, in this case, we have no doubt that FLAT-FALL is merely descriptive of
Applicant’s identified goods under Section 2(e)(1) of the Trademark Act.
Serial No. 88185338
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Decision: The refusal to register Applicant’s FLAT-FALL mark on the Principal
Register under Section 2(e)(1) of the Trademark Act on the ground that the
designation, in its entirety, is merely descriptive of Applicant’s identified goods is
affirmed.