Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE INTERCO INCORPORATED
Serial No. 74/070,079
January 21, 1994
Release: November 29, 1993
Trademark Examining Attorney
Law Office 9
(Sidney I. Moskowitz, Managing Attorney)
Before Sams, Quinn and Hohein
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Registration has been finally refused under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), on the basis of applicant's failure to comply with a requirement to disclaim the word "LIGHTWEIGHTS". Such word, according to the Examining Attorney, is merely descriptive of applicant's goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e), and therefore must be disclaimed. [FN2]
Applicant has appealed. Briefs have been filed but an oral hearing was not requested. We affirm.
Applicant maintains that in light of its housemark "FLORSHEIM," the mark "FLORSHEIM LIGHTWEIGHTS, as a whole, engenders a suggestive commercial impression in which the component LIGHTWEIGHTS is not descriptive but suggestive". The suggestiveness of the term "LIGHTWEIGHTS," applicant asserts, is alternatively shown by the evidence of third-party use made of record by the Examining Attorney, which illustrates use of the adjective "lightweight" rather than the noun "lightweights". Thus, according to applicant:
[T]he evidence establishes that the message conveyed by the term "lightweight" is so direct and clear that third-parties [sic] frequently use the term in describing their goods. On the other hand, the absence of any instances of the use of the term "lightweights" tends to establish that the message conveyed by that term is more remote and subtle.
Applicant, while conceding the descriptiveness of the word "lightweight" as applied to shoes, consequently contends that:
[R]egistration of FLORSHEIM LIGHTWEIGHTS without a disclaimer of the term LIGHTWEIGHTS would not deprive competitors of the term LIGHTWEIGHT (singular, not plural) to identify shoes. It is acknowledged that the term LIGHTWEIGHT is descriptive but it is urged that LIGHTWEIGHTS is not. Lightweight shoes would be a common descriptive use of the term. Lightweights shoes is grammatically incorrect.
We agree, however, with the Examining Attorney that a disclaimer of the term "LIGHTWEIGHTS" is proper since such term merely describes a characteristic or feature of applicant's goods, namely that its shoes are lighter in weight than other types of shoes. Besides noting that applicant's prior registration for its mark contained a disclaimer of the word "LIGHTWEIGHTS," [FN3] the Examining Attorney has relied upon the following evidence in support of her position:
*2 (i) copies of the pertinent pages from Webster's Third New International Dictionary, which among other things defines "lightweight" at 1309 as a noun meaning "1 : one of less than average weight ..." and as an adjective meaning "2 : having less than average weight without fully corresponding lessening of strength, warmth, or other desirable quality ... sweater > ....";
(ii) copies of two third-party registrations for marks in which the term "LIGHTWEIGHT" has been disclaimed; [FN4] and
(iii) copies of excerpts from various recent newspaper stories showing the following uses of the word "lightweight" in relation to shoes: [FN5] "a new, scientifically designed shoe--lightweight, with reinforced everything and a multi-layered sole" (Toronto Star, June 29, 1991, Weekend, at F1); "The shoe is lightweight, but has thicker and stronger soles than other basketball shoes." (N.Y. Times, June 7, 1991, § D, at 6, col. 3); "lightweight boots and shoes" and "lightweight hiking shoes" (N.Y. Times, April 28, 1991, § 3, at 5, col. 1); and "A runner may want a lightweight shoe for training runs." (L.A. Times, April 23, 1991, § E, at 4, col. 3). [FN6]
We concur with the Examining Attorney that the above evidence, especially the dictionary definition and newspaper excerpts, is sufficient to establish that not only is the word "LIGHTWEIGHT," as applicant has admitted, merely descriptive when applied to shoes, but so is the term "LIGHTWEIGHTS". The latter, we believe, would clearly be regarded by customers and prospective purchasers of footwear as merely describing shoes which are lighter in weight than other kinds of shoes. Moreover, instead of lending suggestiveness to such term, we think that when used in conjunction with applicant's "FLORSHEIM" housemark, the term "LIGHTWEIGHTS" still immediately conveys, without speculation or conjecture, a desirable characteristic or feature of applicant's goods, specifically, that the "FLORSHEIM" shoes sold under the "FLORSHEIM LIGHTWEIGHTS" and design mark are lightweight.
As a final consideration, we observe that even if applicant has been the first and/or, unlike its competitors, is presently the only user of the term "LIGHTWEIGHTS" in connection with shoes, such fact cannot alter the merely descriptive significance of the term. See In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972) and cases cited therein. Such fact, in short, is simply not dispositive where, as here, the term "LIGHTWEIGHTS" unequivocally projects a merely descriptive connotation that applicant's shoes are of less than average weight. See In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Accordingly, inasmuch as the designation "LIGHTWEIGHTS" is aptly and unequivocally descriptive as applied to shoes, and since no claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), has been asserted, applicant's mark is not registrable in the absence of the required disclaimer. Nevertheless, pursuant to Trademark Rule 2.142(g), this decision will be set aside and applicant's mark will be published for opposition if applicant, no later than thirty days from the mailing date hereof, submits an appropriate disclaimer of the term "LIGHTWEIGHTS".
*3 Decision: The requirement under Section 6(a) for a disclaimer of the term "LIGHTWEIGHTS" is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN2. Applicant, in a letter accompanying its application, states that the present application has been filed "to replace Reg. No. 879,170[,] owned by the applicant[,] which was cancelled for inadvertent failure to renew". As pointed out by the Examining Attorney, such registration, which likewise was for the mark "FLORSHEIM LIGHTWEIGHTS" and design, contained a disclaimer of the term "LIGHTWEIGHTS".
FN3. It has been held that the disclaimer of a term constitutes both an admission of the merely descriptive nature of such term, as applied to the goods or services in connection with which it is used, and an acknowledgment of the lack of an exclusive right therein at the time of the disclaimer. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA1972).
FN4. Specifically, Reg. No. 1,565,866, issued on November 14, 1989, which is for the mark "LIGHTWEIGHT WIDE TRACK" for "paint shield rollers, paint brushes, paint pads, paint trays, flat pads, tray sets and pad sets" and Reg. No. 920,691, issued on September 21, 1971, which involves the mark "UNIROYAL LIGHTWEIGHT" for "tires".
FN5. Such examples were retrieved during a July 2, 1991 search of the "OMNI" file of Mead Data Central, Inc.'s "NEXIS" data base using the search request "LIGHTWEIGHT W/2 SHOES".
FN6. In addition, as part of the same search, the record contains the following newswire excerpt: "The company's principal products are multi-purpose aerobic cross-training shoes and lightweight aerobic shoes." (Business Wire, April 24, 1991).