Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CORD CRAFTS, INC.
Serial No. 601,633
February 23, 1989
Hearing: January 11, 1989
Edward R. Weingram for applicant
Mark V. Traphagen
Trademark Examining Attorney
Law Office 5
(Paul Fahrenkopf, Managing Attorney)
Before Cissel, Seeherman and Hanak
Members
Member
Applicant has filed an application to register SENSATIONAL 'SILK' for artificial flowers. [FN1] Registration has been refused pursuant to Sections 2(a) and 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(a) and 1052(e)(1), on the grounds that the mark is deceptive and deceptively misdescriptive of textile flowers not made of silk. [FN2]
It is the Examining Attorney's position that artificial flowers can be made from a variety of fabrics, including silk; that applicant's artificial flowers are not made either partly or wholly of silk; that flowers made of silk possess desirable characteristics that those made of other fabrics do not have; and therefore, either because the public will believe that the flowers contain silk or will buy applicant's flowers because of such belief, the mark is either deceptively misdescriptive or deceptive.
The Court of Appeals for the Federal Circuit recently set out the standard for deceptiveness in In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988):
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect the decision to purchase?
The first part of this test would seem to have been easily met by the Examining Attorney in view of applicant's statement that its flowers do not contain any silk. However, applicant argues that its mark is not misdescriptive because 'silk flowers' is a generic term for all fabric flowers, regardless of the actual fabric used. In support of this position, applicant has submitted three affidavits from people in the artificial flower trade (professional buyers and sellers to the trade) who state that both those in the trade and retail purchasers would not believe that fabric flowers are made of silk unless they bear the designation '100% silk'. Applicant has also submitted an article on the fabric flower industry which was published in the 'style' section of a general circulation newspaper. That article includes the statement that '[w]hile fabric blooms fall under the generic heading 'silk flowers,' fewer than 10% of them are actually silk. . . .' Bergen (New Jersey) Record, February 23, 1986, Section F.
The Examining Attorney dismisses the probative effect of this evidence. With respect to the declaration, the Examining Attorney says that no substantiating labels showing the designation 100% silk for 'real' silk flowers have been submitted nor, if such labels are affixed, is there evidence that purchasers check them. As for the newspaper article, the Examining Attorney points out that despite the comment that silk is used generically for all fabric flowers, the author of the article goes on to differentiate between the fabrics by using the word 'silk' to describe only those flowers made of silk.
*2 We do not think the Examining Attorney's objections are well taken. In view of their qualifications, we can rely on the declarants' statements that flowers made of silk bear a particular label without having to view the label. And their statements certainly provide some evidence that purchasers who want flowers made of silk would look for such a label. This evidence is strengthened by the additional information in the record that silk fabric provides certain desirable characteristics for flowers; we think it appropriate to infer from this that anyone knowledgeable enough about fabric flowers to know of the advantages of silk fabric would also know the practice of the trade of denoting flowers made of silk with a '100% silk' label.
With regard to the newspaper article, we think the difficulty in writing about and differentiating between fabric flowers made of silk material and those made of other fabrics, in an article discussing the differences in the fabrics, provides an adequate explanation as to why the author chose to use the term 'silk flowers' for fabric flowers made of silk after first stating that 'silk flowers' described all fabric flowers.
We have considered the other evidence submitted by both the Examining Attorney and the applicant but have found it to be so ambiguous that it cannot support either position. For example, while several newspaper advertisements describe the artificial plants and flowers advertised therein as 'silk,' we cannot determine from them whether the word 'silk' refers to silk fabric or another fabric. The fact that one advertisement submitted by the Examining Attorney identifies the synthetic fabric from which the plants are made is not sufficient for us to find that the trade practice is to reserve the word 'silk' for flowers made of silk.
Nor do the third-party registrations submitted by the Examining Attorney persuade us that the trade uses 'SILK' marks only in connection with flowers made of silk. While many of the registrations for marks containing the word 'SILK' identify the goods as being made wholly or partly of silk, this does not mean that others in the trade (as indicated by the declarations submitted by applicant) do not use 'silk' in connection with fabric flowers not made partly or wholly of silk. [FN3] Further, some of the identifications in the registrations submitted by the Examining Attorney are ambiguous as to whether the goods are made of silk, e.g. 'parts of artificial flowers' [FN4]; 'silk flower arrangements' [FN5].
Finally, the various cases cited by the Examining Attorney for the principle that a trademark containing the word 'SILK' is deceptive when used for clothing are distinguishable on the basis of the goods. That is, while 'silk' for clothing would denote to consumers that the clothing is made of silk, in the case of fabric flowers the evidence is that the word 'silk' does not have that meaning, but refers to all fabric flowers.
In summary, we find that the declarations and the newspaper article are sufficient to show that the word 'silk', when used in connection with flowers, denotes all fabric flowers, whether or not they are made of silk. We think the newspaper article is particularly compelling on this point, since it shows that the term is known not only within the trade, but is a term to which the consuming public has been exposed.
*3 Decision: The refusal to register on the grounds of deceptiveness and deceptive misdescriptiveness is reversed. At the oral argument, applicant agreed to file a disclaimer of 'SILK' should we find, as we have, that the word 'silk' is not deceptive but is descriptive of fabric flowers. That disclaimer was subsequently filed and will be entered, after which the application will forwarded for publication.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 601,633, filed June 2, 1986 and claiming first use and first use in commerce as early as August 1981.
FN2. Registration was also refused because applicant did not comply with the formal requirement of submitting a declaration to support its substitute specimens. The Examining Attorney maintained this refusal in his Examiner's Statement, but applicant made no mention of it in either its main or its reply brief. At the oral argument, applicant's attorney explained that he did not disagree with the Examining Attorney's requirement, but that he had wanted to resolve the substantive issue of the deceptiveness refusal before dealing with the formal, procedural point.
Applicant's position is not well taken and is, in fact, directly contrary to Patent and Trademark Office Practice. Trademark Rule 2.142(c) states that 'all requirements made by the examiner and not the subject of appeal shall be complied with prior to the filing of an appeal.' Since applicant did not comply with the requirement of submitting a declaration, a requirement which it has conceded to be proper, it would be appropriate to affirm the refusal of registration on this basis even if we were to reverse on the other grounds. However, at the oral argument the Examining Attorney specifically stated that he would withdraw this requirement if applicant submitted a declaration supporting the specimens, and applicant thereupon did so. Because of the special circumstances involved, we will treat this case as though the Examining Attorney and the applicant had properly consented to a remand for the purpose of submitting the declaration, and will consider the requirement to have been withdrawn.
FN3. At the oral argument the Examining Attorney stated that it is Office policy to allow the registration of 'SILK' marks so long as there is some silk in the product. We question whether, if 'silk' is understood by the customer to refer to fabric content, a very small percentage of silk fabric content can avoid deceptiveness or deceptive misdescriptiveness.
FN4. Registration No. 1,095,320 for 'SO-SYLK' (Stylized).
FN5. Registration No. 1,400,478 for 'THE SILK CORNER'.