Supervalu Inc.

Trademark Trial and Appeal Board

Oct 26, 2000

No. 75367274 (T.T.A.B. Oct. 26, 2000)

Paper No.
10/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Supervalu Inc.
________
Serial Nos. 75/367,250; 75/367,274;
75/367,251 and 75/367,273.
_______
Jamie Nafziger of Dorsey & Whitney LLP for Supervalu Inc.
Katherine Stoides, Trademark Examining Attorney, Law Office
109 (Ronald Sussman, Managing Attorney)
_______
Before Seeherman, Hohein and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Supervalu Inc. has filed four applications to register
the mark PREFERRED BASICS, as follows:
Application Serial No. 75/367,250 for
home furnishings, namely, pillows,
decorator pillows, chair pads and
laundry hampers; window coverings,
namely, toppers, shades, blinds and
curtain rods (Class 20);
Application Serial No. 75/367,274 for
bathroom scales;
Application Serial No. 75/367,251 for
bath products, namely, drinking
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
2
glasses, soap dishes, tooth brush
holders, waste baskets, toilet brushes,
and tissue box holders (Class 21); and
Application Serial No. 75/367,273 for
domestic articles, namely, bed sheets,
blankets, comforters, mattress pads,
and mattress protective covers; bath
products, namely, towels, shower
curtains; kitchen textiles, namely,
tablecloths, dish towels, dish cloths,
placemats, pot holders, napkins; home
furnishings, namely, unfitted fabric
furniture covers (Class 24); and bath
rugs and area rugs (Class 27).
Each of the applications was filed on October 2, 1997,
and each was based on applicant's asserted bona fide
intention to use the mark in commerce.
For each application the Examining Attorney made final
a requirement that applicant disclaim exclusive rights to
the word BASICS, which she asserts is merely descriptive of
the various goods. Applicant has filed appeals in each
application from the requirement that BASICS be disclaimed.
Each appeal was fully briefed, although no oral
hearings were requested.
Because the appeals all involve the same issue,
namely, whether the requirement for a disclaimer of BASICS
is proper, we will decide them in a single opinion.
However, because the evidence in each file is not
identical, and because the determination of whether the
word BASICS is merely descriptive depends on the particular
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
3
record as well as the particular goods identified in each
application, we will analyze this question with respect to
each application separately.
Before turning to the central question in these
appeals, we note that the Examining Attorney has raised
certain evidentiary objections. The Examining Attorney has
objected to the third-party registrations submitted by
applicant in all four applications, stating that they were
not in proper form and/or were submitted untimely. Neither
of these objections is well taken.1 It is well established
that, to make registrations of record, an applicant may
submit soft copies of the registrations themselves, or the
electronic equivalent thereof, i.e., printouts of the
registrations taken from the electronic records of the U.S.
Patent and Trademark Office's own database. In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Applicant
submitted printouts of registrations taken from the USPTO's
on-line database. The Examining Attorney has not provided

1 It is noted that a cover page to the third-party registrations
submitted by applicant as Exhibit A with its request for
reconsideration in Application Serial No 75/367,273 lists, in
addition to the copies of the five registrations which were made
of record with the request for reconsideration, ten other third-
party registrations. Applicant has not relied on nor discussed
those registrations, and we assume that it did not intend to make
them of record; in any event, we confirm that the listing was
insufficient to make them of record, and they were not considered
in connection with the appeal of Application Serial No.
75/367,273.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
4
any reason why such printouts would be considered
unacceptable. Applicant speculates that it may be because
the cases allowing printouts of registrations from the
USPTO's electronic records were decided before the USPTO
made its database available on-line. If that is indeed the
basis for the Examining Attorney's objection, we find it to
be without merit. The on-line database, just like the
other electronic databases, is part of the USPTO records.
Although certain information in the on-line database may
not be updated as quickly as other USPTO electronic
databases, it is appropriate for us to take judicial notice
of any change in status, in the same manner in which the
Board takes judicial notice of changes of status of
registrations between the time they are submitted and the
time a decision is rendered.
As for the Examining Attorney's objection that certain
of the third-party registrations were not timely submitted,
a review of the files shows that, at the latest, all the
registrations were made of record with requests for
reconsideration, and the Board remanded the applications to
the Examining Attorney to consider the requests for
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
5
reconsideration, including any evidence submitted
therewith. Therefore, the submissions were timely.2
This brings us to the substantive issue in each
appeal, namely, whether the term BASICS in the mark
PREFERRED BASICS is merely descriptive of the identified
goods and must be disclaimed.
There are certain principles, as set forth in the
statute and the case law, which guide each determination.
Section 6 of the Trademark Act provides that the Director
may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable. Section 2(e)(1)
prohibits the registration of a mark which, when used on or
in connection with the goods of the applicant, is merely
descriptive of them. A term is merely descriptive if, as
applied to the goods or services in question, it describes
an ingredient, quality, characteristic, function, feature,
composition, purpose, attribute, use, etc., of such goods
or services. Moreover, the question of whether a
particular term is merely descriptive must be determined
not in the abstract, but in relation to the goods or
services for which registration is sought, the context in

2 Ironically, the Examining Attorney untimely submitted with her
briefs copies of search strategies. These documents have not
been considered.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
6
which the mark is used, and the significance that the mark
is likely to have, because of the manner in which it is
used, to the average purchaser as he encounters goods
bearing the mark in the marketplace. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986). A suggestive
mark, on the other hand, is registrable without evidence of
acquired distinctiveness. "Whether a given mark is
suggestive or merely descriptive depends on whether the
mark 'immediately conveys…knowledge of the ingredients,
qualities, or characteristics of the goods with which it is
used,' or whether 'imagination, thought, or perception is
required to reach a conclusion on the nature of the
goods.'" In re Gyulay, 821 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). It has been recognized that there is but a
thin line of distinction between a suggestive and a merely
descriptive term, and it is often difficult to determine
when a term moves from the realm of suggestiveness into the
sphere of impermissible descriptiveness. In re Recovery,
Inc., 196 USPQ 830 (TTAB 1977).
Application Serial No. 75/367,250
This application identifies the goods as pillows,
decorator pillows, chair pads, laundry hampers, toppers,
shades, blinds and curtain rods. The Examining Attorney
has made of record in this application a dictionary
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
7
definition of "basic" as meaning "of, being, or serving as
a starting point or basis: a basic course in Russian; a
set of basic woodworking tools."3 In addition, she has
submitted part of the Fall 1998 Chambers catalog showing a
box entitled HOTEL BASICS above the copy:
The best hotels know that luxury begins
with the basics: crisp, high-thread-
count sheets, feather-soft pillows, the
fluffiest towels and warmest duvets.
For those who dream of enjoying the
same comforts at home, Chambers is
pleased to offer the Hotel Basics
collection for bed and bath. On these
pages, we present the very finest in
hotel bedcovers, toweling and
furnishings--items of exceptional
quality and durability from the linen
houses and artisans who supply to
luxury hotels the world over.
The Examining Attorney has also submitted certain materials
downloaded from the Internet, specifically a
site/advertisement for a store called COUNTRY BASICS which
describes itself as "a lil' country shop that sells throw
blankets, handmade candles, and country crafts"; and an
"under construction" website for Strouds, which has a
listing of various "topics," including "home, fashion
bedding, bath, basic bedding, tabletop and Rvsale," [sic]
and which displays a "comforter & baffled fiberbed," a

3 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
8
magnetic pillow enhancer, a baffled box featherbed, down
comforters, and a mattress pad.4
Finally, the Examining Attorney has submitted two
third-party registrations. The first is for the mark
BULLDOG BASICS, with the word BASICS disclaimed, for a wide
variety of goods, including duffel bags, beach towels, T-
shirts, plush toys, and toy model trucks, and for mail
order catalog services featuring, inter alia, clothing,
cups, bibs, luggage, hats, watches, mugs, knives, cigarette
lighters, hood ornaments, desk sets, flags, blankets, beach
towels, golf towels, golf balls and toy model trucks.5 The
second, for BASIC BODY PLUS, with BASIC BODY disclaimed, is
for bath and body accessories which include body brushes,
body sponges, soap dishes and dispensers; hair brushes and
combs; and portable travel containers.6

4 The Examining Attorney also submitted a page from a YAHOO!
Search for the word "basics" which displays site matches 67-86 of
2380. The Examining Attorney has highlighted a listing which
states, in its entirety, "Down to Basics--down comforters,
pillows, linens, accessories, and custom work, featuring the
unique patented design of our diagon comforter." There is so
little information provided in this listing by Yahoo that it is
relatively useless as evidence of anything, much less evidence of
descriptiveness of the word "basics." We cannot even determine
whether "Down to Basics" is the name of a company.
5 Registration No. 2,194,935.
6 Registration No. 2,173,548.
The Examining Attorney also made of record an application by a
third-party for COCOON BASICS, with the word BASICS disclaimed.
According to our check of the Office records, this application
has not proceeded to registration and, indeed, a final refusal
issued in May 2000. We are not aware of any case law which
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
9
After carefully reviewing all of the evidence
submitted by the Examining Attorney, we find that she has
failed to demonstrate that the word BASICS, in the
trademark PREFERRED BASICS, is merely descriptive of "home
furnishings, namely, pillows, decorator pillows, chair pads
and laundry hampers; window coverings, namely, toppers,
shades, blinds and curtain rods." The references to Home
Basics in the Chambers catalog, and to Country Basics in
the Internet site appear to be trademark or service mark
usage; certainly we cannot conclude from these references
that BASICS is a merely descriptive term for applicant's
goods. In fact, the COUNTRY BASICS website does not even
list any of the goods identified in this application. The
listing for "Basic Bedding" in the "under construction"
Strouds website may indicate that "basic bedding" describes
a category for certain home furnishings, although we would
be reluctant to make such a finding based only on this
piece of evidence. Given that this website also similarly
lists "fashion bedding" as a topic or category, it is not
clear to us to what "basic bedding" refers. More
importantly, there is a difference between the terms "basic

states that third-party applications can demonstrate Office
disclaimer practice. Accordingly, we do not consider this
application to have any probative value.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
10
bedding" and "basics," as used in the mark PREFERRED
BASICS. Therefore, even if we were to conclude that the
items pictured and listed on this printout--a comforter and
baffled fiberbed, a magnetic pillow enhancer, down
comforters, a baffled box featherbed and a mattress pad--
were basic bedding, some thought is still required to go
from this conclusion to a recognition that these items are
BASICS. (As an aside, we also point out that none of the
goods pictured and listed on the printout coincide with any
of the goods identified in applicant's application.)
Similarly, although "basics" may be defined as "an
essential, fundamental element or entity, we think that a
consumer would have to exercise a degree of thought to
associate this term with, for example, a laundry hamper,
first making a determination that such an item was
essential "in furnishing one's bathroom," Examiner's brief,
p. 5, and then realizing that "basics" means an essential
element, and from that concluding that BASICS describes the
laundry hamper.
Based on the evidence of record, we find that BASICS,
in the mark PREFERRED BASICS, does not immediately convey
information to purchasers about a characteristic or quality
of applicant's pillows, laundry hampers, window coverings,
etc., but instead consumers would have to exercise some
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
11
thought or imagination to reach an association between the
word and the goods. The need to exercise imagination,
thought or perception is, of course, the hallmark of a
suggestive mark.
In reaching our conclusion we have also considered the
two third-party registrations submitted by the Examining
Attorney in which the word BASICS (in BULLDOG BASICS) and
the words BASIC BODY in BASIC BODY PLUS have been
disclaimed. These registrations do not illustrate any
pattern by the U.S. Patent and Trademark Office of treating
marks similar to applicant's as containing a merely
descriptive term. For example, the registration for BODY
BASIC PLUS involves the word BASIC, not BASICS, with BASIC
clearly modifying BODY. As for BULLDOG BASICS, the
registration covers so many different kinds of items in
different classes that we cannot determine from it what
items BASICS was determined to be descriptive of, or even
why a disclaimer was either required or offered. In this
connection, it is noted that an applicant may offer a
disclaimer of even registrable material.
On the other hand, applicant has submitted numerous
third-party registrations for BASICS marks in which no
disclaimer was required, including NATURE'S BASICS for
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
12
pillows;7 SLEEP BASICS for pillows;8 COMFORT BASICS for
pillows;9 and BALI BASICS for window blinds.10 Of
particular interest is a registration for BASICS per se for
pillows,11 registered without recourse to Section 2(f),
where the Examining Attorney obviously believed that BASICS
is inherently distinctive for such goods. Obviously, the
Board is not bound by the decisions of Examining Attorneys
in other applications, but at the very least these
registrations raise doubt about whether the word BASICS is
viewed as being merely descriptive of goods similar or
identical to applicant's.
As we noted in setting forth the general principles
governing the determination of whether a mark is merely
descriptive or suggestive, there is but a thin line of
distinction between the two. In this case, we find that
applicant's mark for its identified goods falls on the
suggestive side of that line.
Application Serial No. 75/367,274
The goods identified in this application are "bathroom
scales." In support of the requirement for a disclaimer,

7 Registration NO. 2,188,996.
8 Registration No. 2,183,453.
9 Registration No. 2,167,277.
10 Registration No. 1,296,356.
11 Registration No. 1,941,427.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
13
the Examining Attorney has made of record the dictionary
definition, an excerpt from the Chambers catalog referring
to Hotel Basics, third-party registrations for BULLDOG
BASICS and BASIC BODY PLUS, and a third-party application
for COCOON BASICS discussed above. The Examining Attorney
has also submitted the following excerpt from an article
taken from the NEXIS database:
Basic serving pieces, and general gifts
such as sterling photo frames and
crystal bowls and vases, have become
elegant staples.
Basic housewares items, such as coffee
makers, a bread machines (sic),
bathroom scales and kitchen tools
continue to make the grade with brides
outfitting their first home, or just
looking to upgrade what she already
has.
"HFN The Weekly Newspaper for the Home
Furnishing Network", April 20, 1998
We have already discussed much of this evidence at
length, and see no need to repeat why we find it
unpersuasive. We would, in addition, point out that, in
connection with the Hotel Basics catalog excerpt, there is
no reference to bathroom scales, nor are bathroom scales
listed in the third-party registrations and application.
We have also considered the excerpt from the article
in "HFN The Weekly Newspaper for the Home Furnishing
Network," a publication which appears from its name to be a
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
14
trade paper. It is not clear to us that all kitchen tools,
as well as bread machines, would be viewed as basic
housewares items, as this article indicates. We also note
that applicant has submitted a third-party registration for
HOME BASICS for, inter alia, electric coffee makers,
electric can openers, electric mixers, electric knives, and
electric food processors.12 The word BASICS was not
required to be disclaimed in this registration; in fact, it
is the word HOME that is disclaimed. (The newspaper
article, of course, refers to coffee makers and tools as
basic household items.)
In any event, we are not persuaded from this single
reference to bathroom scales as "basic housewares items"
that consumers will, upon seeing PREFERRED BASICS for
bathroom scales, immediately understand that BASICS
describes a quality of the scales.
After reviewing all the evidence of record we cannot
accept the Examining Attorney's position that "'BASICS'
immediately identifies the applicant's goods as 'the
starting point or basis' of, in this instance, bathroom
furnishing--i.e. bathroom scales." Brief, p. 4. By the
very nature of the product, a bathroom scale would, of

12 Registration No. 2,151,280.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
15
course, be used in a bathroom, but it can hardly be
considered a "starting point" for bathroom furnishings.
Again, we find that BASICS in the mark PREFERRED
BASICS for bathroom scales falls on the suggestive side of
the merely descriptive/suggestive line.
Application Serial No. 75/367,251
This application identifies the goods as "bath
products, namely, drinking glasses, soap dishes, tooth
brush holders, waste baskets, toilet brushes, and tissue
box holders."
In support of her requirement for a disclaimer of
BASICS, the Examining Attorney has made of record a
dictionary definition for "basics"; the Hotel Basics
excerpt from the Chambers catalog; and the third-party
registrations for BULLDOG BASICS and BODY BASIC PLUS and
the third-party application for COCOON BASICS, all of which
have been discussed in connection with Application Serial
No. 75/367,250. Again, we find this evidence to be
unpersuasive, and point out that the Hotel Basics catalog
listing makes no mention of any of the goods identified in
this application, nor does the registration for BULLDOG
BASICS or the application for COCOON BASICS. The
registration for BASIC BODY PLUS does include soap dishes
and dispensers, but the disclaimer of BASIC BODY in that
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
16
registration, as well as the different manner in which
BASIC is used in BASIC BODY PLUS as compared with PREFERRED
BASICS, does not support the view that BASICS should be
disclaimed in the present case.
The Examining Attorney has also made of record the
following excerpt from an article,13 entitled "Plan College
Move to Avoid Many Hassles," taken from the NEXIS database:
…Find out what cleaning materials and
equipment are provided.
Find out if items such as curtains and
shower curtains are included.
Don't forget such basic items as waste
baskets, brooms and laundry supplies.
"The Times-Picayune," August 14, 1997
Finally, the Examining Attorney has made of record a
print-out from an Internet website for giftbasketexpress
entitled "Bathroom Basics Gift Basket" which states "This
gift basket will make a great gift for anyone" and which
includes towels, and a "ceramic soapdish" and a "ceramic
toothbrush holder."
The NEXIS article indicates that purchasers may view a
waste basket as a basic item; however, we still believe

13 The Examining Attorney submitted two additional articles, but
these are both from Canadian newspapers and there is no evidence
of any exposure of such newspapers, or the articles contained
therein, to U.S. consumers. Therefore, we have not considered
them in making our determination.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
17
that some thought is required to go from 1) the definition
of "basics" as essential, fundamental elements to 2) the
concept that a waste basket is a basic or fundamental item
to 3) a conclusion that BASICS, in the mark PREFERRED
BASICS, is being used to refer to a waste basket or any of
the other identified items. Thus, as used in the mark,
BASICS does not immediately convey this information.
As for the "Bathroom Basics Gift Basket" advertised in
the Internet printout, we agree that "bathroom basics" is
used in this advertisement as a merely descriptive term for
such items as a soapdish and a toothbrush holder.
Countering this, however, is the evidence of third-party
registrations of BASICS marks submitted by applicant in
which a disclaimer of the word BASICS was not required. In
particular, we note the registration for BATH BASICS for
tumblers, soap dishes and toothbrush caddies. Even if we
assume, arguendo, that "Basics" has a descriptive
significance when used as part of the phrase "Bathroom
Basics," it does not have the same significance when used
in the mark PREFERRED BASICS. Even though the mark
PREFERRED BASICS will be used in connection with such basic
bathroom items as towels, soap dishes and toothbrush
holders, some degree of thought or imagination is still
necessary to connect the word BASICS, when used in the mark
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
18
PREFERRED BASICS, to the goods. Although this Internet
evidence is the most significant that the Examining
Attorney has produced to show the descriptiveness of
BASICS, we find it falls somewhat short of clearly
demonstrating the merely descriptive nature of the term.
Moreover, given the policy that we resolve doubts on the
issue of descriptiveness in favor of the applicant, and
recognizing the thin line of distinction between suggestive
and merely descriptive marks, we do not believe it
appropriate to find that BASICS is merely descriptive based
on this very limited amount of evidence.
Application Serial No. 75/367,273
This application is for "domestic articles, namely,
bed sheets, blankets, comforters, mattress pads, and
mattress protective covers; bath products, namely, towels,
shower curtains; kitchen textiles, namely, tablecloths,
dish towels, dish cloths, placemats, pot holders, napkins;
home furnishings namely, unfitted fabric furniture covers,
in Class 24, and bath rugs and area rugs in Class 27.
In support of the requirement for a disclaimer of
BASICS, the Examining Attorney has submitted evidence
submitted in connection with the companion applications,
including a dictionary definition of "basics"; the Hotel
Basics excerpt from the Chambers catalog (which references
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
19
sheets, duvets and towels); Internet evidence consisting of
the Yahoo listing of site matches, the Country Basics
website (which mentions throw blankets), the Strouds "under
construction" website (which lists comforters and mattress
pads), and the giftbasketexpress advertisement for
"Bathroom Basics Gift Basket"(which includes towels);14 and
the third-party registrations for BULLDOG BASICS (this
registration includes beach towels) and BASIC BODY PLUS
(this registration does not include any of the specific
items identified in applicant's application) and the third-
party application for COCOON BASICS (this application
includes silk bed sheets, silk quilts filled with silk,
bath towels, textile bath mats, textile table cloths and
textile napkins). We have already discussed this evidence,
and will not burden this opinion by repeating those
comments.
The Examining Attorney has also submitted a number of
excerpts of articles taken from the NEXIS database. Some
of these articles are from foreign publications; some use

14 Although no objection was raised in connection with the other
applications under appeal, in its main brief in this case
applicant states that the citation of web pages was improper
because the Examining Attorney did not disclose her search
strategy. This objection is not well taken. The materials
obtained from the Internet do, in fact, show the web addresses
for them.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
20
the term "basic" or "basics" in manners which are clearly
different from the descriptive meaning the Examining
Attorney alleges, for example, with the connotations of
"standard" or "inexpensive." Some of the references are
ambiguous, and we are simply unable to ascertain from the
excerpts the connotation which "basic" or "basics" is
intended to convey.15 We do not consider any of these
articles as probative of the merely descriptive meaning of
"basics" for the involved goods.16

15 For example, an excerpt from the April 14, 1997 issue of "HFN,
The Weekly Newspaper of the Home Furnishing Network," states that
the "…smaller hotels, motels, colleges and other similar groups
regularly contact me to ask the retail places they can buy basic
textiles like sheets and towels. They are not big enough to be
served by the larger mills and that's made plain to them when
they attempt a purchase." "Basic," as used in this excerpt, may
as easily refer to inexpensive textiles as to describing sheets
and towels as essential items. Similarly, the following excerpt
comes from the July 5, 1998 issue of "The San Diego Union-
Tribune": "The companion Greenwich collection mixes country
florals and traditional plaids. To complement these and other
seasonal offerings, Hilfiger has his 'essentials,' basic towels
and linens in mixable jewel-toned solids and stripes." In this
excerpt, "basic" may as easily be read as meaning "plain" as
"essential."
16 Although applicant made no objection with respect to the
Examining Attorney's submission of NEXIS evidence in connection
with the three other applications discussed in this opinion
(aside from the objection to articles taken from foreign
publications, see footnote 13), in its appeal brief for
Application Serial No. 75/367,273 applicant notes that the 17
printouts taken from the NEXIS data base were selected from 119
search results, and points out that the Examining Attorney did
not state whether the 17 printouts were representative of the 119
search results. Citing TMEP § 1106.07, applicant also makes the
comment that the Examining Attorney did not indicate what
research services were used or the number of documents she
reviewed and that, if she reviewed all of the articles revealed
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
21
The most relevant articles in showing such a meaning
are the following:
…First Step had provided hundreds of
families with free "starter kits" of
housing basics such as beds, dressers,
blankets and towels…. "The Plain
Dealer," November 1, 1998
The collection encompasses five color
groups and will offer basics from
kitchen towels to table cloths. "HFN,
The Weekly Newspaper of the Home
Furnishing Network," September 22, 1997
…Gale Asberry, who as a new homeowner
in 1996 was in need of some "basic home
necessities--you know, sheets, towels
and maybe some kitchen gadgets…." "The
Arizona Republic," January 7, 1998
Applicant, on the other hand, has submitted certain
third-party registrations for marks containing the word
BASICS in which no disclaimer of that term was required.

by her search and relied on these materials in making her
refusal, she was required to send this material to applicant.
We note that the cover sheet to the NEXIS materials, which was
sent to applicant as part of the March 31, 1999 Office action,
indicates the search request, the library and file, and that 17
of 119 stories found were printed. These 17 story excerpts were
also included with the Office action. Although the Examining
Attorney did not specifically state the number of stories which
were reviewed, or that the stories made of record were a
representative sample of those reviewed, we do not regard these
deficiencies as a fatal flaw which would result in our not
considering the NEXIS evidence. Having said that, however, we
note that of the 17 stories submitted out of 119 retrieved, only
three are even arguably useful in showing a descriptive
connotation for "basic" or "basics." We can certainly take into
consideration the fact that such a minimal number of stories were
found to support the Examining Attorney's position, since we can
assume that the Examining Attorney has submitted the most
persuasive evidence available.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
22
These include HOME BASICS for towels;17 and BEACH BASICS
(stylized, BEACH disclaimed) for beach sheets and towels18
Having reviewed all of the evidence, we find that it
is not sufficient to demonstrate that BASICS, as used in
applicant's mark, is merely descriptive of its identified
goods. Our view of the reference to sheets and towels as
"basic home necessities" in the third NEXIS article is the
same as our consideration of a similar NEXIS reference in
connection with Application Serial No.75/367,251 ("such
basic items as waste baskets"): a consumer would have to
exercise thought to transition from a recognition of the
definition of "basics" as essential elements to the view
that sheets and towels are basic home necessities to a
conclusion that BASICS, in the mark PREFERRED BASICS,
refers to a quality or characteristic of sheets or towels.
As for the Internet evidence regarding "Bathroom Basics
Gift Basket," we recognize, as we stated in our discussion
of Application Serial No. 75/367,251, that this evidence
shows that BASICS has some connection with items such as
towels. That connection is also demonstrated by the NEXIS
excerpts referring to blankets and towels as "housing
basics" and referring to kitchen towels and table cloths as

17 Registration No. 1,869,639.
18 Registration No. 1,842,994.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
23
"basics." However, as we have also stated previously, the
significance of the word BASICS in applicant's mark
PREFERRED BASICS is different from the significance of this
word when it is part of the phrase "bathroom basics" or
"housing basics" or is used alone.
Because of the recognition that there is a gray area
in determining the descriptiveness of a mark, it is a well-
established practice, where reasonable men may differ, to
resolve doubt in the applicant's favor. See In re The
Gracious Lady Service, Inc., 175 USPQ 380 (TTAB 1972). We
do so in this case with respect to the requirement for a
disclaimer of BASICS in connection with the goods in Class
24. With respect to the goods in Class 27, as applicant
has pointed out, none of the evidence references BASICS
specifically in connection with such goods. Accordingly,
we have no doubts with respect to the goods in this class;
the evidence of record is simply insuffient to prove that
BASICS is merely descriptive of such goods.
Ser. No. 75/367,250; 75/367,274;
75/367,251 and 75/367,273
24
Decision: The requirement for a disclaimer of the
word BASICS in Applications Serial Nos. 75/367,250;
75/367,274; 75/367,251 and 75/367,273 is reversed.
E. J. Seeherman
G. D. Hohein
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board