Worldwise, Inc.

Trademark Trial and Appeal Board

May 10, 2006

No. 76604027 (T.T.A.B. May. 10, 2006)

Mailed:
May 10, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Worldwise, Inc.
________

Serial No. 76604027
_______

Michael E. Dergosits of Dergosits & Noah LLP for Worldwise,
Inc.

Maureen L. Dall, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Drost and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

An application was filed by Worldwise, Inc. to
register the mark CATNIPLOUNGER (in standard character
form) for “pet bed” in International Class 20.1 The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), and June 30, 2002 is

1 Application Serial No. 76604027, filed July 19, 2004.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 76604027
2
alleged in the application as the date of first use of the
mark anywhere and in commerce.
The examining attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that applicant's mark,
as applied to applicant's goods, is merely descriptive of
such goods. Additionally, the examining attorney has
refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant's
mark so resembles the previously registered mark LOUNGER
(in standard character form) for “beds for pets,”2 also in
International Class 20, that, as used on applicant’s
identified goods, applicant's mark is likely to cause
confusion or mistake or to deceive.
Applicant has appealed the final refusals of its
application. Applicant and the examining attorney filed
opening briefs, but applicant did not request an oral
hearing.
In the paragraphs that follow, we first consider the
Section 2(e)(1) refusal and then consider the Section 2(d)
refusal. Both refusals to register are affirmed.

2 Registration No. 2388975, issued September 26, 2000.

Ser No. 76604027
3
Section 2(e)(1) – Mere Descriptiveness
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538 (1920). See
also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778 (Fed. Cir. 2003). The test for determining whether a
mark is merely descriptive is whether it immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
Ser No. 76604027
4
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
As is immediately apparent upon perceiving applicant's
mark, the mark is a combination of the words CATNIP and
LOUNGER. This impression is reinforced by applicant's
specimen; CATNIP appears in light lettering on a dark
background and LOUNGER appears in dark lettering on a light
background. Also, the initial letter in each word is in
upper case, and the remaining letters are in lower case.
In view of this combination of words, the examining
attorney argues as follows:
The evidence attached to the Office Action
dated May 16, 2005 and the Final Office Action
dated July 25, 2005, which includes at least 20
articles obtained via the Google® internet search
engine and five articles from the Lexis/Nexis®
computerized database, demonstrates that
‘lounger’ is a term commonly used to describe a
type of pet bed. Meanwhile, ‘catnip’ is a
feature of the applicant's pet beds. In this
regard, the applicant’s specimen specifically
says that the goods contain refillable catnip
pouches. When combined to form the term
‘CATNIPLOUNGER,’ each of the individual terms
retains its descriptive nature. Therefore, the
composite mark is descriptive. Brief at p. 8.

Applicant's specimen of use makes clear that
applicant's goods include catnip. Specifically, the
specimen of use states, “Adding Catnip Invites Cats To
Ser No. 76604027
5
Lounge Or Play” and “Keep Interest Fresh With Refillable
Catnip Pouch.” (Capitalization in the original specimen.)
Thus, catnip is a significant feature of applicant's pet
beds. Further, the examining attorney’s evidence of
record, consisting of printouts from third-party websites,
results from an Internet search using the Google search
engine, and excerpts from the Nexis database,3 establishes
prima facie that a “lounger” is a type of pet bed. The
following are representative samples of excerpts obtained
from third-party websites and excerpts from four of the
five articles obtained from the Nexis database:
From third-party websites
Kitty Cat Lounger with Puma Pattern
Every kitten would love this model kitty cat
lounger.
(from www.cozycatfurniture.com)

Orthopedic Pet Lounger
At last, a lounger designed for maximum comfort
and security of the pet.
(from www.petsmart.com)
Personalized Faux Sheepskin Lounger for Cats
(from www.petsmart.com)

Reversible Lounger Dog Bed
(from www.radiofence.com)

3 The examining attorney states that “[f]ive representative
articles [from the Nexis database were] attached” to the final
Office action. We accord limited weight to the fifth excerpt
because it is an excerpt from a wire service story – Nexis
excerpts from wire services are generally accorded limited
probative value because it cannot be assumed that they have been
seen in a newspaper or periodical. In re Patent and Trademark
Services Inc., 49 USPQ2d 1537 (TTAB 1998).
Ser No. 76604027
6

TrendyPets Plain Dyed Chenille Dog Lounger
(from www.gpsdirect.biz)

Medium Dog Lounger/Cuddler Bed
(from www.terisstore.com)4

From Nexis database
Products include collars, leads, leashes,
bandannas, pet loungers and T-shirts
(from Orlando Sentinel (Florida), July 18, 2004)

Indy also likes “the cat lounger attached to the
window in the living room. I had to buy a second
one so the cats would have a place to nap.”
(from The Dallas Morning News, June 7, 2003)

… includes a visit to a dog day spa, a photo
session with a professional photographer, a
doggie lounger and a dog leash with attached
light.
(from The Post-Standard, Syracuse, NY)

… has just the thing for tired dogs – a pet couch
that folds out to become a lounger ….
(from The Miami Herald, December 14, 1997)

Applicant has argued that the mark is not merely
descriptive because LOUNGER has been registered for “beds
for pets” in Registration No. 2388975 (the registration
which forms the basis of the Section 2(d) refusal) and
hence has been found by the Office not merely descriptive
of those goods. Applicant asserts that, in view of that
registration, CATNIPLOUNGER cannot be merely descriptive of
the goods of the present application. Applicant's argument

4 This excerpt identifies the same item as both a “lounger” and
a “bed.”
Ser No. 76604027
7
is not persuasive because while a term at its inception or
adoption, and registration, may be arbitrary or even
suggestive in character, it may subsequently come to be
regarded by the purchasing public as nothing more than a
descriptive designation for the goods on which it is used.
See DeWalt, Inc. v. Magna Power Tool Corp., 129 USPQ 275
(CCPA 1961). In this case, the record shows ample
descriptive use of “lounger” with respect to “pet bed[s].”
Also, it is well settled that the Office and the Board are
not bound by the decisions or actions of previous examining
attorneys, but instead must decide each case on its own
record and merits. In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Applicant also cites to In re Colonial Stores, Inc.
157 USPQ 381 (CCPA 1968) involving the mark SUGAR & SPICE
and argues that its mark has “another associative
connotation” besides the descriptive meaning of each
individual term in the mark; and that “CATNIPLOUNGER could
mean a number of goods such as beds, pillows, futons, rugs
or blankets which either contain catnip, or which provide a
catnip odor, or which are colored or designed as catnip
leaves, or any of these combinations. CATNIPLOUNGER could
not be considered descriptive only of pet beds.” Brief at
unnumbered p. 3. (Emphasis in the original brief.)
Ser No. 76604027
8
Applicant appears to be arguing that because there may
be other meanings of “lounger” as applied to other goods,
the mark is not merely descriptive of applicant's goods.
However, that a term may have other meanings in different
contexts is not controlling. In re Polo International
Inc., 51 USPQ2d 1061 (TTAB 1999); In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). Merely because there are other
descriptive meanings of “lounger” does not render the term
registrable for applicant's goods and services. See In re
MBAssociates, 180 USPQ 338 (TTAB 1973). When the mark
CATNIPLOUNGER is viewed in connection with applicant’s
goods, namely a pet bed that has a pouch for catnip,
consumers will immediately understand CATNIPLOUNGER as
describing such products.
Further, although not entirely clear, it appears that
applicant, in citing In re Colonial Stores, supra, may be
arguing that even if the terms “catnip” and “lounger” are
descriptive, the combination of the two terms is not
descriptive. It is true that a term which is created by
combining two or more unregistrable words may achieve
registration if, in combination, a new and different
commercial impression is achieved and/or the term so
created imparts a bizarre or incongruous meaning as used in
connection with the goods or services. See In re Oppedahl
Ser No. 76604027
9
& Larson LLP, supra; In re National Shooting Sports
Foundation, 219 USPQ 1018 (TTAB 1983). However, this is
not the case here. We find that the mark in its entirety
is merely the sum of two merely descriptive components and
is equally merely descriptive in connection with
applicant's identified goods. The exercise of imagination
or thought is not required for prospective users of
applicant's goods to perceive readily the merely
descriptive significance of the term CATNIPLOUNGER as it
pertains to applicant's goods. The term CATNIPLOUNGER
immediately describes, without conjecture or speculation, a
feature or characteristic of applicant's goods, namely,
that applicant's goods are pet loungers which contain
catnip.5
Section 2(d) – likelihood of confusion
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood

5 Applicant has observed that “despite apparent extensive online
searching by the Examining Attorney, no instance could be found
where anyone has combined ‘catnip’ and ‘lounger’ for any purpose
whatsoever let alone as a trademark to identify the source or
origin of pet beds.” Brief at unmarked p. 2. Applicant's
observation appears to be more appropriate to an argument that
its mark is not generic. However, evidence of use of the
combined term “catnip lounger” or “catniplounger” is not required
to prove that a term is merely descriptive.
Ser No. 76604027
10
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The cited registration is for the mark LOUNGER. As we
stated in our discussion regarding the Section 2(e)(1)
refusal, the evidence of record – including the uses by
third parties of “lounger” to identify a type of pet bed -
shows that LOUNGER has a descriptive connotation for pet
beds. However, because we must accord the cited
registration the presumptions of Section 7(b) of the
Trademark Act, for purposes of our likelihood of confusion
analysis, we consider the cited mark to be a highly
suggestive, rather than a merely descriptive term. While
the registration is entitled to a very limited scope of
protection due to the highly suggestive nature of the mark,
it is still entitled to some protection. Here, applicant's
and registrant's goods are legally identical, with
Ser No. 76604027
11
applicant's goods identified as “pet bed[s]” and
registrant’s goods identified as “beds for pets.”
Applicant's mark incorporates the entirety of registrant's
mark and is distinguished only by the addition of the
descriptive word CATNIP to registrant’s mark. Applicant
thus has added a descriptive term to the highly suggestive
term LOUNGER, and uses the combination on legally identical
goods. Even according the cited registration the limited
protection to which it is entitled, such protection still
extends to prevent the registration of CATNIPLOUNGER.
Simply put, the additional descriptive term CATNIP does not
suffice to distinguish the marks.
We add too that applicant's and registrant’s goods are
both inexpensive goods which may be purchased on impulse.
See, e.g., printout from www.petsmart.com showing loungers
for cats priced at $21.99. When products are inexpensive
and subject to impulse buying, the risk of consumer
confusion increases because purchasers are held to a lesser
standard of purchasing care. See Recot, Inc. v. M.C.
Becton, 214 F.3d 1332, 54 USPQ2d 1894 (Fed. Cir. 2000).
Under such circumstances, the addition of the term CATNIP
to the highly suggestive term LOUNGER certainly does not
serve to mitigate any likelihood of confusion.
Ser No. 76604027
12
Applicant has argued that the record includes “a
plethora of users of” LOUNGER “for products related to
bedding and relaxation which strongly cut against
registrant’s ability to stop others from identifying the
source of such goods by ‘lounger.’” Brief at unmarked p. 2.
Applicant adds that “[i]t is inconceivable to applicant
that the Examining Attorney would cite page after page of
recitations of those using ‘lounger’ to describe products
for sleeping, lounging or relaxing unrelated to registrant
on the one hand and yet assert that CATNIPLOUNGER and
LOUNGER are confusingly similar on the other.” Id.
Further, in the context of discussing the Section 2(e)(1)
refusal, applicant concludes that “the marks, as a whole,
are weak being somewhat suggestive, at a minimum, of the
goods.” Id. However, as the examining attorney has
pointed out, weak marks too are entitled to protection
against registration by a subsequent applicant of the same
or similar mark for the same or closely related goods or
services. King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); In re
Colonial Stores, 216 USPQ 793, 795 (TTAB 1982).
In view of the foregoing, and mindful that in cases
such as the present one, where applicant’s and registrant’s
goods are identical, the degree of similarity between the
Ser No. 76604027
13
marks which is required to support a finding of likelihood
of confusion is less than it would be if the goods were not
identical, Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), we
conclude that consumers familiar with registrant's “beds
for pets” offered under the mark LOUNGER would be likely to
believe, upon encountering applicant's mark CATNIPLOUNGER
for “pet bed[s],” and particularly pet beds that, as
applicant’s specimens show, contain a pouch for catnip,
that they both originate with the same entity.
Decision: The refusal of registration under Section
2(d) of the Act is affirmed. The refusal of registration
under Section 2(e)(1) of the Act also is affirmed.