Thomas R. Tomei

Trademark Trial and Appeal Board

Feb 26, 2004

No. 76359997 (T.T.A.B. Feb. 26, 2004)

Mailed: 2/26/04
Paper No. 9
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Thomas R. Tomei
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Serial No. 76359997
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Norman E. Lehrer for Thomas R. Tomei.
Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Thomas R. Tomei has appealed from the final refusal of
the Trademark Examining Attorney to register WORLDWIDE
MARINE, with the word MARINE disclaimed, for "retail store
services featuring boats, powerboats, sailboats, pleasure
yachts, boat parts and accessories for use on boats."1
Registration has been refused pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. 1052(e)(1), on the ground
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Ser No. 76359997
2
that applicant's mark is merely descriptive of his
identified services.
Applicant and the Examining Attorney have filed
briefs. Applicant did not request an oral hearing.
It is the Examining Attorney's position that WORLDWIDE
MARINE is merely descriptive because it describes the scope
of applicant's retail store services and the goods he will
offer for sale. In support of this refusal, the Examining
Attorney has submitted the following dictionary
definitions:
Worldwide: (adj.) involving or
extending throughout the entire world;
universal: a worldwide epidemic; (adv.)
throughout the world; distributed
worldwide2
Marine: (adj.) 1.b. Of or relating to
the navigation of the sea (n.) 1.b.
seagoing ships esp. in relation to
nationality or class.3
In addition, the Examining Attorney has submitted
excerpts of articles, taken from the NEXIS database,
showing that the word "marine" is used to describe boats
and the sales of boats, and that "worldwide" is used to
1 Application Serial No. 76359997, filed January 18, 2002, and
asserting a bona fide intention to use the mark in commerce.
2 The American Heritage Dictionary of the English Language, 3d.
ed. © 1992.
3 Merriam-Webster's Collegiate Dictionary, 10th ed. © 1993.
Ser No. 76359997
3
describe businesses having stores in more than one country,
e.g.:
His company, which has offices in Fort
Lauderdale, San Diego, San Francisco,
Seattle, Newport, R.I., Newport Beach,
Calif. (where Fraser lives) and Monaco,
also has expanded into different
aspects of the marine business.
Besides selling boats, Fraser Yachts
Worldwide offers marine insurance,
helps owners charter their yachts...
"Sun-Sentinel" (Fort Lauderdale, FL),
October 29, 2000
Johnson Worldwide Associates Inc. is an
integrated, global recreation products
company engaged primarily in the
marketing and distribution of fishing,
camping, diving and marine products.
"Business Journal-Milwaukee," June 22,
1996
Quantum International, Stroudsburg, a
distributor of specialty products for
worldwide automotive and marine
industries...
"The Morning Call" (Allentown), May 1,
1995
The marine industry is saturated by
dealers that sell packaged boats.
"The Arkansas Democrat-Gazette,"
October 11, 2002
...The strongest selling segment of the
marine industry right now is luxury
yachts," he added....
"Sun-Sentinel" (Fort Lauderdale, FL),
February 16, 2002
Bass Pro has a soup-to-nuts marine
department that sells six brands of
boats....
"The Baltimore Sun," September 30, 2001
Ser No. 76359997
4
visitors can buy or sell new and used
boats and other marine products.
"The Atlanta Journal and Constitution,"
February 16, 2001
Starbucks added 383 stores overseas
last year and has some 6,000 stores
worldwide....
"The Seattle Times," November 15, 2002
The Examining Attorney has also submitted copies of
third-party registrations for, inter alia, retail
distributorships in the field of sea vessels, in which the
word MARINE has been disclaimed.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1), if it immediately
conveys knowledge of the ingredients, qualities or
characteristics of the goods or services with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). See also, In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978).
In this case, the evidence demonstrates that the word
"marine," which applicant has disclaimed, is a merely
descriptive term for the goods which applicant offers
through his retail store services. The evidence also shows
that "worldwide" would immediately be perceived as
describing the geographic scope of applicant's retail store
services. In this connection, applicant does not dispute
that his services can be offered worldwide. Applicant has
Ser No. 76359997
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made the somewhat equivocal statement, in both his response
filed October 15, 2002 and his appeal brief, that
"Applicant does not necessarily sell his boats worldwide."
We must regard this statement as indicating that applicant
may, when he does begin using the mark, offer his services
in other countries. Applicant also seems to acknowledge
the descriptiveness of the individual terms in his mark:
"Although Appellant acknowledges that his mark may be
suggestive and may even be somewhat descriptive, it is
submitted that the combination is not merely descriptive."
Brief, p. 2.
Applicant argues that imagination, thought and
perception (the hallmarks of a suggestive mark) must be
exercised because "one seeing or hearing the term WORLDWIDE
MARINE would not immediately know that Appellant provides
retail store services featuring boats." Brief, p. 2.
However, applicant has failed to recognize that 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 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
the goods or services in the marketplace. See In re Abcor
Ser No. 76359997
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Dev. Corp., supra; In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986). Thus, the question is not whether
consumers can guess what services WORLDWIDE MARINE is used
with, but whether consumers, upon seeing the mark WORLDWIDE
MARINE used in connection with "retail store services
featuring boats, powerboats, sailboats, pleasure yachts,
boat parts and accessories for use on boats," would
immediately understand that applicant's retail store
services feature marine equipment and that they are offered
in multiple countries.
As for applicant's contention that when the individual
words are combined into the mark WORLDWIDE MARINE, the
combination is not merely descriptive, applicant has given
no explanation as to why the phrase is not merely
descriptive. As we have previously discussed, in our view
consumers would immediately perceive WORLDWIDE MARINE as
describing applicant's identified services.
Finally, applicant has pointed to several third-party
registrations for marks containing the word WORLDWIDE, in
which this term was not disclaimed, and the registrations
were not obtained through a showing of acquired
distinctiveness. Such third-party registrations marks have
little persuasive value. The Board must evaluate each
application on its own merits. In re Nett Designs, 236
Ser No. 76359997
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F.3d 1339, 57 USPQ2d 1564. Furthermore, four of the six
third-party registrations are for goods, and "worldwide" is
unlikely to describe features or attributes of goods. Of
the other two registrations, the word MERCHANT in WORLDWIDE
MERCHANT for "consulting services for establishing and
using a web site on the global computer information
network" does not describe the services, and WORLDWIDE
describes MERCHANT. Similarly, the word WORLDWIDE in
WORLDWIDE WRITERS' PLACE for providing instruction in the
areas of writing and reading describes the WRITERS, not the
geographic extent of the instruction services.
Decision: The refusal of registration is affirmed.