Vans, Inc.

Trademark Trial and Appeal Board

Sep 29, 2021

88677016 (T.T.A.B. Sep. 29, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: September 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vans, Inc.
_____

Serial No. 88677016
_____

Kaitlyn Garvin of Saunders & Silverstein LLP,
for Vans, Inc.
Samantha Sherman, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Bergsman, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Vans, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
THE ORIGINAL CHECKERBOARD CO. ESTABLISHED SINCE SIXTY-SIX (in
standard characters) for:
Belts; Bottoms as clothing; Footwear; Headwear; Jackets;
Pants; Shirts; Shorts; Socks; Sweat Pants; Sweat Shirts;
Tops as clothing, in International Class 25.1

1 Application Serial No. 88677016 was filed on November 1, 2019, originally based upon
Applicant’s assertion of a bona fide intention to use the mark in commerce under Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b). Applicant subsequently submitted an amendment
to allege use on May 13 2020, claiming first use anywhere at least as early as August 29,
Serial No. 88677016
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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
Applicant’s applied-for mark is merely descriptive of the identified goods.
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, including, in the alternative, registration on the
Supplemental Register. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed and fully briefed, including Applicant’s
reply brief. For the reasons set forth below, the refusal to register is affirmed.
I. Descriptiveness Under Section 2(e)(1)
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
precludes registration of a mark on the Principal Register that, when used in
connection with an applicant’s goods, is merely descriptive of them. 15 U.S.C.
§ 1052(e)(1). “A mark is merely descriptive if it immediately conveys information
concerning a feature, quality, or characteristic of the goods or services for which
registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965,
128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363,
123 USPQ2d 1707, 1709 (Fed. Cir. 2017)).

2019 and first use in commerce since at least as early as January 20, 2020, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a).

Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system in downloadable .pdf format.
References to the briefs on appeal refer to the Board’s TTABVUE docket system where the
first number is the docket entry and the second number is the page within the entry.

Serial No. 88677016
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Determining the descriptiveness of a mark under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), is not considered in the abstract. Rather, it is considered
in relation to an applicant’s goods for which registration is sought, the context in
which the mark is being used, and the possible significance the term would have to
the average purchaser of the goods because of the manner of its use or intended use.
See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)).
For a term to be merely descriptive within the meaning of § 2(e)(1), it is not
necessary that the term describe each feature of the goods, only that it conveys a
single, significant ingredient, quality, characteristic, feature, function, purpose or use
of the goods with which it is used. See, e.g., In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Chamber of Commerce, 102
USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
Marks comprising more than one element, like Applicant’s mark, must be
considered as a whole and should not be dissected; however, we may consider the
significance of each element separately in the course of evaluating the mark as a
whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Oppedahl & Larson, 71 USPQ2d at 1372
(“PTO may properly consider the meaning of ‘patents’ and the meaning of ‘.com’ with
respect to the goods identified in the application. However, if those two portions
Serial No. 88677016
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individually are merely descriptive of an aspect of appellant’s goods, the PTO must
also determine whether the mark as a whole, i.e., the combination of the individual
parts, conveys any distinctive source-identifying impression contrary to the
descriptiveness of the individual parts”). Thus, we begin by looking at the meaning of
the components of Applicant’s applied-for mark.
Looking at the first word in the beginning of Applicant’s applied-for mark, the
definite article “THE” is not distinctive and adds no source-indicating significance to
the applied-for mark as a whole; and Applicant does not contend otherwise. See In re
The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005) (“the definite article THE . . .
add[s] no source-indicating significance to the mark [THE GREATEST BAR] as a
whole”); Conde Nast Publications Inc. v. Redbook Publishing Co., 217 USPQ 356, 357,
360 (TTAB 1983) (“[t]he fact that the slogan [THE MAGAZINE FOR YOUNG
WOMEN] also includes the article ‘The’ is insignificant. This word cannot serve as an
indication of origin, even if applicant’s magazine were the only magazine for young
women.”); In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) (holding
THE COMPUTER STORE merely descriptive of, and the common descriptive name
for, computer-related services).
Moving to the second term, “ORIGINAL” is defined as “not derived from
something else; fresh and unusual . . .”2 The Board has held “that the word ‘original’
used alone or paired with descriptive wording is merely laudatory and descriptive of

2 See January 13, 2020 Office Action at TSDR 7, The American Heritage Dictionary,
www.ahdictionary.com/word/search.html?q=original.
Serial No. 88677016
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goods being the first of their kind.” See In re Ervin, 1 USPQ2d 1665, 1666 (TTAB
1986) (holding THE “ORIGINAL” merely laudatory and descriptive of applicant’s
scorer for playing euchre as the first of its kind); Gen. Foods Corp. v. Ralston Purina
Co., 220 USPQ 990, 994 (TTAB 1984) (holding ORIGINAL BLEND merely laudatory
and descriptive of applicant’s cat food comprising a first-of-its-kind combination of
ingredients).3 “Marks that are merely laudatory and descriptive of the alleged merit
of a product are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing
marks are regarded as a condensed form of describing the character or quality of the
goods.” DuoProSS Meditech v. Inviro Med. Devices, 103 USPQ2d at 1759 (quoting In
re The Bos. Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see also
Gen. Foods v. Ralston Purina, 220 USPQ 990.
Additionally, the Examining Attorney submitted Internet excerpts showing third-
party use of the term “ORIGINAL” to advertise or describe clothing goods similar to
those of Applicant:
Rockstar Original® (offering jackets, jeans and t-shirts).4
Kohl’s – Mens Levi’s® 501® – “Original Clothing.”5
HAVEN Children – “Sustainable, socially responsible, and
original clothing for kids.”6
In response, Applicant made of record Principal Register registrations for marks
that include the term “ORIGINAL” which was not disclaimed or registered under

3 Examining Attorney’s Brief, 10 TTABVUE 6-7.
4 See January 13, 2020 Office Action at TSDR 9-13.
5 Id. at TSDR 14-18.
6 Id. at TSDR 19-22.
Serial No. 88677016
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§ 2(f). We only find the following three registrations to be probative since they involve
clothing items and services related to Applicant’s goods7:
Mark Registration No. Goods/Services

TEXAS AND SINCE 1965
disclaimed

3449196 Retail stores featuring western
clothing, boots, hats, and
accessories in Class 35
ORIGINAL GANGSTER
GEAR

GEAR disclaimed
3214076 Clothing, namely, shoes, jackets,
t-shirts, hats, sleepers, namely,
long shirts and panties in Class
25
THE ORIGINAL MADE IN
AMERICA STORE

MADE IN AMERICA and
4584657 Clothing, namely, t-shirts in
Class 25

7 See December 8, 2020 Request for Reconsideration, Exhibit A at TSDR 70-76. The following
registrations are not probative since they cover unrelated goods and services and were not
considered: Registration Nos. 5819963 for OINK THE ORIGINAL SINGING PIG (SINGING
PIG disclaimed) for a comedy performing pig show; 3003616 for THE ORIGINAL LIVING
STATUES (LIVING STATUES disclaimed) for videos and live performances performed by
costumed street performers; 5520036 for THE ORIGINAL BED & BREAKFAST
COLLECTION (COLLECTION disclaimed) for buying club and related services; 3221409 for
(PEANUT DRYING SEMI TRAILER disclaimed) for peanut semi trailers; 3934732 for
THE ORIGINAL JERSEY BOYS for providing live concerts; 3098762 for MADE BY THE
ORIGINAL TOBACCO TRADERS for cigarettes; and 4074613 for ORIGINAL 1853 CHIPS
(CHIPS disclaimed) for frozen processed vegetables
Additionally, Registration Nos. 3156626 for THE ORIGINAL SEX SYMBOL; 3141996 for
www.Geek-Guy.com The Original Geek Toy Store & Design, STORE disclaimed; and 2925109
for meta.com mor pix the original photo mix, PHOTO disclaimed, were also included in
Exhibit A but are cancelled and have not been considered. It is well-established that an
expired or cancelled registration is only evidence that the registration issued and it does not
carry any of the legal presumptions under Section 7(b) of the Trademark Act, 15 U.S.C. §
1057(b). In re Info. Builders, Inc., 2020 USPQ2d 10444, at *6 n.19 (TTAB 2020).
Serial No. 88677016
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Mark Registration No. Goods/Services
STORE disclaimed

Applicant notes that the registered marks having the structure “THE ORIGINAL
[noun]” (and “ORIGINAL [noun]”) were registered even when the inserted noun is
arguably descriptive of the relevant goods or services. However, the non-descriptive
portion of its applied for mark, i.e., “THE ORIGINAL CHECKERBOARD CO.,”
according to Applicant, takes the standard convention of “THE ORIGINAL
(descriptive term)” “and turns it on its head by successfully swapping out an ordinary
descriptive term for a term that instead powerfully suggests a connection between its
goods and the high-adrenaline world of action sports. . . . [Applicant] chose a much
stronger identifier that references underlying concepts that are deep at the heart of
Applicant’s brand identity.”8 Inasmuch as only two of the registered marks for
clothing include a descriptive noun, and there is no evidence supporting Applicant’s
assertion that “THE ORIGINAL CHECKERBOARD” suggests a connection between
its goods and the “high adrenaline world of action sports,” the third-party
registrations cited by Applicant offer it little support.
Applicant also contends that “‘ORIGINAL’ cannot be considered descriptive of
Applicant’s goods because, in context, i[t] clearly modifies the word ‘CO.,’” conveying
to consumers that Applicant is the first brand to build its identity around the “unique

8 Applicant’s Appeal Brief, 8 TTABVUE 10.
Serial No. 88677016
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symbolism of the Checkerboard.”9 Applicant’s unsubstantiated statement without
more, is not sufficient for us to find that “ORIGINAL” modifies “CO.” In any event,
whether “ORIGINAL” is used alone or paired with descriptive wording like “CO.”
(addressed infra), it is merely descriptive of goods that Applicant represents are the
first of their kind.
As to the term “CHECKERBOARD,” it “merely describes the pattern of
Applicant’s goods” as supported by the definition of “CHECKERBOARD” which is
defined as “a pattern resembling the alternating squares” of “a board on which chess
and checkers are played, divided into 64 squares of two alternating colors;”10 “2:
something that has a pattern or arrangement like a checkerboard.”11
The Examining Attorney submitted Internet excerpts showing use of the term
“checkerboard” by third parties in advertising that describes clothing goods similar
to those of Applicant (emphasis below added):
Michael Kors® – “Keaton Checkerboard Logo Leather
Slip-On Sneaker”; “Crafted from leather and updated in a
checkerboard print with ‘KORS’ lettering, our Keaton
slip-on sneakers are an instant favorite for off-duty
ensembles.”12
Topshop® – “Checkerboard Love Print Trousers”;
“Channel a modern look with our high waisted stand out

9 Applicant’s Appeal Brief, 8 TSDR 5.
10 January 13, 2020 Office Action at TSDR 23, The American Heritage Dictionary,
www.ahdictinary.com/word/search.html?q=checkerboard, Copyright 2020 Houghton Mifflin
Harcourt.
11 The Board may take judicial notice of dictionary definitions. See In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014) aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016). See Merriam-Webster dictionary; merriam-webster.com /dictionary/checkerboard,
9/28/2021.
12 See January 13, 2020 Office Action at TSDR 25-34.
Serial No. 88677016
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combat trousers featuring all over love checkerboard
print.”13
H&M® – “Checkerboard Shirt”; “Straight-cut shirt in
woven cotton fabric with a printed checkerboard
pattern.”14
Zazzle® - “Checkerboard Clothing & Shoes.”15
AXCID Shop – “Checkerboard Collection;”
“Checkerboard Clothing;” “Checkerboard clothing is so
trendy these days; “Versatile and easy-to-wear, impress
your best babes with these uber cool checkerboard
clothing pieces;” “The checkerboard clothing items are
perfect for girls who adore the attention, who doesn’t?;”
“Try out a checkerboard top and accessorize with our
hottest jewelry to achieve that high-fashion street style.”16
Ben Sherman® – “Long-Sleeve Dash Dot Checkerboard
Shirt – Black;” “With a classic-fit silhouette, a textured
dash-dot checkerboard pattern, and premium cotton
materials, this men’s long-sleeved shirt is a great addition
to any wardrobe.”17
Jungmaven® – “Checkerboard Venice Short;” “Retro
checkerboard print on our retro Op-style Venice
Shorts.”18
Dannijo® – “Checkerboard Hoodie.”19
Nordstrom Rack® – Theory® – “Rammy Checkerboard
Shirt”; “The checkerboard button-down that every closet

13 Id. at TSDR 35-37.
14 Id. at TSDR 38-42.
15 See February 2, 2021 Request for Reconsideration Denied at TSDR 57-65.
16 Id. at TSDR 66-70.
17 Id. at TSDR 71-72.
18 Id. at TSDR 73-75.
19 Id. at TSDR 91-94.
Serial No. 88677016
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needs for a polished and effortless casual style;” “Allover
checkerboard print.”20
ASOS® – ASOS DESIGN® “dress in checkerboard.”21
Madewell® – “Flannel Courier Shirt in Checkerboard;”
“We remade our perfectly oversized, slightly boxy shirt in
a bold navy checkerboard-print flannel.”22
Escada® – “Sequin Checkerboard Dress”; “Our seasonal
checkerboard motif gets a glamorous twist in this
sparkly sequin dress.”23
Bugatchi® – “Long Sleeve Checkerboard Check Cotton
Shirt.”24
Additionally, the Examining Attorney submitted copies of Internet articles
published in Gear Patrol, in an article entitled “Our Favorite Brands Are Using This
Unexpected Pattern,” and New York Magazine, in an article entitled “I Suddenly
Want to Cover My Body (and My Home) in Checkerboard,” mentioning Applicant’s
“checkerboard” pattern on socks and shoes.25

20 Id. at TSDR 111-114.
21 Id. at TSDR 115-117.
22 Id. at TSDR 118-122.
23 Id. at TSDR 123-126.
24 Id. at TSDR 127-129.
25 See February 2, 2021 Request for Reconsideration Denied, Gear Patrol, www.gear
patrol.com/style/a696602/checkerboard-style-trend/ at TSDR 76-88 (“From sneakers to
shirts, sweaters and accessories, the pattern follows in the footsteps of the recent animal-
print trend. Perhaps the most well-known example is Sean Penn’s character Spicoli in the
‘80s teen movie Fast Times at Ridgemont High. His stoner character sported the now-iconic
Vans slip-on in a checkerboard print, which trendy youth had previously been DIY-ing with
permanent markers.”).
New York Magazine, nymag.com/strategist/article/checkerboard-print-trend.html at TSDR
95-106 (“a pair of black-and-white checkerboard-print socks – which I decided not to
purchase because I just didn’t want to spend $26 on socks – stood out to me. I kind of forgot
about them until a few weeks later, when a friend posted a photo of herself wearing those
exact same socks paired with checkerboard slip-on Vans on Instagram. . . . It’s not a new
Serial No. 88677016
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Based on the evidence submitted, “checkerboard” is a descriptive term used to
describe a common fabric pattern design which is used on some of Applicant’s goods.26
Turning to the term “CO.,” it designates Applicant’s entity or business type.27
Usually, business type designations and abbreviations such as “Corporation,” “Inc.,”
“Company,” “Co.,” “LLC,” and “Ltd.” must be disclaimed in marks seeking
registration on the Principal Register under §2(f) or on the Supplemental Register
because they merely indicate an applicant’s business type or structure and generally
have no source-indicating capacity. See, e.g., Goodyear’s India Rubber Glove Mfg. Co.
v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888) (the addition of the word
“Company” only indicates that parties have formed an association or partnership to
deal in such goods, either to produce or to sell them); In re Piano Factory Grp., Inc.,
85USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49
USPQ2d 1537, 1539-40 (TTAB 1998); TRADEMARK MANUAL OF EXAMINING PROCEDURE
§ 1213.03(d) (July 2021). There is nothing that changes the meaning of the business
designation “CO.” as used in Applicant’s applied-for mark; indeed, the explanatory

trend. Anyone who’s seen Fast Times at Ridgemont High (circa 1982) will remember Sean
Penn’s character’s black-and-white checked Vans. . . . Includes a photograph of and link
to purchase Applicant’s checkerboard print ‘Classics’ shoes with the caption ‘And just
because we wouldn’t be here without them.’”). (emphasis added).
26 See Applicant’s specimen at TSDR 1-21.
27 In response to the Examining Attorney’s request at 10 TTABVUE 11, we take judicial
notice of the definition of “Co.” from Merriam-Webster Online Dictionary (www.merriam-
webster.com/dictionary/company) attached at 10 TTABVUE 33, which establishes that “Co.”
is an abbreviation for “Company” defined as “an association of persons carrying on a
commercial or industrial enterprise.” In re Jimmy Moore LLC, 119 USPQ2d 1764, 1768
(TTAB 2016) (taking judicial notice of definitions from Merriam-Webster Online Dictionary
at www.merriam-webster.com).
Serial No. 88677016
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phrase following “CO.,” i.e., “ESTABLISHED SINCE SIXTY-SIX,” reaffirms that
“CO.” is used as a business designation in Applicant’s mark and must be disclaimed.
With respect to the remaining portion of its mark, “ESTABLISHED SINCE
SIXTY-SIX,” Applicant concedes the common, descriptive nature of that phrase as
applied to its clothing, footwear and headwear by agreeing to disclaim it.28 The
disclaimer of a term constitutes an admission of the merely descriptive nature of that
term, as applied to the goods or services in connection with which it is registered, and
an acknowledgment of the lack of an exclusive right therein at the time of the
disclaimer. See In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005); In re
JM Originals, 6 USPQ2d 1393, 1394 (TTAB 1987) (citing Quaker State Oil Refining
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972), aff’g 161
USPQ 547, 549 (TTAB 1969)). As explained by the Examining Attorney, the phrase
“ESTABLISHED SINCE SIXTY-SIX” merely conveys that Applicant’s business
began in the year 1966.29 This phrase is commonly used in business to indicate when
a company was founded or otherwise began operating; thus, it is merely informational
about the goods and does not function as a mark when used in that sense. In re Bos.
Beer, 53 USPQ2d at 1058-59; In re Eagle Crest, Inc., 96 USPQ 1227, 1229 (TTAB
2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006).
While conceding that the “ESTABLISHED SINCE SIXTY-SIX” portion of its mark
is descriptive, Applicant contends that “THE ORIGINAL CHECKERBOARD CO.”

28 Applicant’s Appeal Brief at 8 TTABVUE 4; Applicant’s Reply Brief at 11 TTABVUE 5.
29 See January 13, 2020 Office Action at TSDR 51.
Serial No. 88677016
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does not convey qualities or characteristics of Applicant’s clothing goods to
consumers, but rather it is a playfully suggestive unitary phrase that consumers will
perceive as referring to Applicant’s “specific and distinct brand identity” involving the
“thrills and excitement associated with action sports and skate culture.”30
A mark is suggestive if some imagination, thought, or perception is needed to
understand the nature of the goods and/or services described in the mark; whereas a
descriptive term immediately and directly conveys some information about the goods
and/or services. See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111
USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech v. Inviro Med.
Devices, 103 USPQ2d at 1755). While a mark comprising a combination of merely
descriptive components is registrable if the composite creates a unitary mark with a
separate, nondescriptive meaning as applied to the goods or services, see In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217
USPQ 363 (TTAB 1983), if the individual components of a mark retain their
descriptive meaning in relation to the goods, the combination results in a composite
mark that is itself descriptive and not registrable. In re Oppedahl & Larson, 71
USPQ2d at 1371; In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB
2016); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015). Based on the
facts before us, the individual components retain their descriptive meaning in the
composite term “THE ORIGINAL CHECKERBOARD CO.” and, therefore, the
composite term is merely descriptive.

30 Applicant’s Appeal Brief, 8 TTABVUE 4, 12.
Serial No. 88677016
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Applicant argues that the USPTO has allowed registration of other well-known
fabric pattern names in connection with comparable goods on the Principal Register,
clearly recognizing that the marks as a whole amount to more than the sum of their
individual parts. The marks below, according to Applicant, are examples of the
suggestive quality of pattern names in connection with goods similar to those in
Applicant’s application31:
Mark Registration No. Relevant Goods
CHECKS AND STRIPES 5763041 Tops as clothing; Bottoms as
clothing; Headwear in Class
25
BLACK STRIPE
CLOTHING COMPANY

CLOTHING
COMPANY disclaimed

5756097 Hats; Hoodies; Shirts;
Sweatshirts; T-shirts;
Hooded sweatshirts in Class
25
DOT & STRIPE 5909260 Blazers; Blouses; Coats;
Dresses; Jackets; Pants;
Shirts; Shorts; Skirts; Tops
as clothing in Class 25
STITCHES AND STRIPES 5354896 Clothing, namely, sweaters,
dresses, skirts, cardigans,
pants, tunics, beanies,
scarves in Class 25
13 STRIPES 5577195 Hats, shirts in Class 25
STRIPES AND SOLIDS 2583700 Clothing namely, T-shirts,
shorts, shirts, pants, socks,
jackets, sweaters, caps,
shoes, boots, pajamas,
scarves, robes, underwear,
bathing suits, gloves and ear
muffs in Class 25
RED PLAID SOCIETY 4716163 Clothing, namely, tee shirts
and caps in Class 25

31 See evidence submitted with May 14, 2020 Response to Office Action at TSDR 9-49.
Serial No. 88677016
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5767281 Men’s suits; suit separates,
namely, jackets, pants, and
vests; blazers; pants; shorts;
shirts; ties as clothing; knits,
namely, sweaters and
jackets; outerwear, namely,
overcoats; footwear in Class
25
RED STRIPE 1744634 Clothing; namely, shirts and
visors in Class 25
STARS STRIPES AND
SOLIDS
2683363 Clothing namely, T-shirts,
shorts, shirts, aprons, bath
robes, pants, socks, jackets,
sweaters, caps, shoes, boots,
pajamas, scarves, robes,
underwear, bathing suits,
hats, gloves and ear muffs in
Class 25

INDIGO and PAISLEY disclaimed
5988602 Beach coverups; Blouses;
Caftans; Dresses; Jackets;
Jumpsuits; Pants; Pareos;
Rompers; Sarongs; Scarves;
Shirts; Short-sleeved shirts;
Shorts; Sleepwear; Tank
tops; Tunics; Clothing,
namely, wrap-arounds in
Class 25

Applicant contends that the marks covered in the foregoing registrations support
its position that “consumers will immediately perceive THE ORIGINAL
CHECKERBOARD CO., not as a descriptor of the patterns on [its] goods, but as a
playful, unitary phrase that suggestively references the concepts at the heart of
Applicant’s brand, namely, the thrills and excitement associated with action sports
and skate culture,” concluding that “THE ORIGINAL CHECKERBOARD CO.” is “a
unitary and playfully suggestive phrase that consumers will perceive as referring to
Serial No. 88677016
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Applicant’s carefully crafted brand identity. It does not immediately convey to
consumers qualities or characteristics of Applicant’s clothing goods.”32
While the Board must decide each case on its own merits, even if the cited
registrations have some characteristics similar to Applicant’s mark, the USPTO’s
allowance of such prior registrations does not bind the Board. In re Nett Designs Inc.,
236 F.3d 1338, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). More importantly, none of
the third-party registrations cited by Applicant are similar to the applied-for mark
inasmuch as they contain different wording and wording structures than those used
in Applicant’s mark.33 In view of the different natures of Applicant’s mark and the
marks in the cited third-party registrations, they provide no support for the
registrability of Applicant’s mark on the Principal Register.
Here, the combination of the descriptive or non-source indicating terms
comprising Applicant’s mark does not create a unitary mark with a separate,
nondescriptive meaning. The wording “THE ORIGINAL CHECKERBOARD CO.”
directly conveys information about Applicant’s goods. No amount of imagination,
thought, or perception is needed to understand that Applicant’s goods feature a
checkerboard design.34 The evidence establishes that the average consumer would be
accustomed to seeing these terms used to refer specifically to features of clothing,
footwear and headwear. Accordingly, for the reasons set forth above, Applicant’s

32 Applicant’s Appeal Brief, 8 TTABVUE 12.
33 Examining Attorney’s Brief, 10 TTABVUE 10.
34 See Applicant’s specimen at TSDR 1-21; Applicant’s Appeal Brief, 8 TTABVUE 12;
Applicant’s Reply Brief, 11 TTABVUE 3-4.
Serial No. 88677016
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applied-for mark is merely descriptive of a feature or characteristic of such goods
under § 2(e)(1) of the Trademark Act.
In the alternative, Applicant seeks registration on the Supplemental Register.35
If, in an application that is the subject of an ex parte appeal to the Board, the
applicant has asserted alternative positions (such as, that its mark is not merely
descriptive of its goods and/or services, and that the mark has, in any event, become
distinctive of its goods and/or services in commerce; or that its mark has become
distinctive of its goods and/or services in commerce, and that the mark is, in any
event, registrable on the Supplemental Register), the examining attorney should
clearly state their position with respect to each of the applicant’s alternative claims.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1215
(2021). As noted by the Examining Attorney in her brief, “[a]s stated in previous
Office actions, the applied-for mark is eligible for registration on the Supplemental
Register with a disclaimer of ‘CO. ESTABLISHED SINCE SIXTY-SIX’.”36 Thus,
Applicant has been advised that its application is eligible for registration on the
Supplemental Register subject to entry of the disclaimer of “CO. ESTABLISHED
SINCE SIXTY-SIX” as this wording is generic or incapable of registration in the
context of Applicant’s goods. Therefore, Applicant will be given time to file the
disclaimer upon which its application will proceed to the Supplemental Register.

35 Request for Reconsideration at TSDR 10.
36 Examining Attorney’s Brief at 10 TTABVUE 20; January 13, 2020 Office Action at TSDR
5; June 9, 2020 Final Office Action at TSDR 4.
Serial No. 88677016
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Decision: The refusal to register THE ORIGINAL CHECKERBOARD CO.
ESTABLISHED SINCE SIXTY-SIX on the Principal Register under § 2(e)(1) of the
Trademark Act is affirmed.
Applicant’s request, in the alternative, for registration on the Supplemental
Register will be granted upon Applicant’s submission of a disclaimer of “CO.
ESTABLISHED SINCE SIXTY-SIX” to the Board within thirty days from the date of
this decision. The disclaimer should read: “No claim is made to the exclusive right to
use ‘CO. ESTABLISHED SINCE SIXTY-SIX’ apart from the mark as shown.”
Registration of the mark on the Supplemental Register is refused in the absence of
such disclaimer.