Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE FEDERATED DEPARTMENT STORES, INC.
Serial No. 457,760
June 22, 1987
Hearing: March 17, 1987
Prutzman, Kalb, Chilton & Alix for applicant
R. Ellsworth Williams
Trademark Examining Attorney
Law Office 6
(Ronald E. Wolfington, Managing Attorney)
Before Allen, Rooney and Simms
Federated Department Stores, Inc. has applied under Section 2(f) to register THE CHILDREN'S OUTLET (OUTLET disclaimed) for retail children's clothing store services. In addition to a claim of five years substantially exclusive and continuous use in commerce, applicant filed, along with its application, the declaration of Boris Auerbach, applicant's vice president. Mr. Auerbach attested that applicant is the owner of a registration for THE CHILDREN'S OUTLET [FN1]; that since its first use of that term applicant has opened an additional 29 new stores in 9 states under that name and that each opening represents significant advertising expenditures.
Registration was finally refused on the grounds that applicant's mark is so highly descriptive as to be incapable of functioning as a service mark and, in the alternative, 'if the designation is found to be capable, the evidence submitted is not sufficient to establish that the term has acquired a secondary meaning within the aim of Section 2(f).'
Following the final refusal to register, applicant requested reconsideration, filing additional evidence at that time consisting of the declaration of Orval Madden, Senior Vice-President and General Merchandise Manager of The Children's Place division of applicant corporation, who declared that applicant, at the time of the Madden declaration, operated sixty-two retail stores in 19 states as THE CHILDREN'S OUTLET, having a volume of 5 million sales transactions per year under the name; that said stores are located in shopping malls having an average of 100 stores each of the average size of 700 thousand square feet and that applicant's store fronts bearing the mark serve as advertisements of its services and are seen by a substantial portion of the population of the U.S.
Applicant argues also that its Supplemental Register registration is an admission by the Office that it considers the mark capable of functioning as a service mark and that the Office is bound by its prior determination of the mark's capability to acquire distinctiveness.
In support of the refusal to register, the Examining Attorney has filed a Lexis/Nexis data print-out consisting of three excerpts, two using the term 'CHILDREN'S OUTLET' in the body of the story, one, as part of the headline thereof [FN2]; a dictionary definition of the word 'outlet' [FN3] and a number of photographs containing illustrations of various types of outlets, i.e., towel and jeans outlet; clothing and towel outlet; mattress and furniture outlet; cigarette outlet; shoe outlet; and one that reads: mill outlet prices.
Applicant has taken exception to the Examining Attorney's expressing the issue on appeal as '. . . whether applicant's mark, THE CHILDREN'S OUTLET, has acquired distinctiveness pursuant to Section 2(f) of the Lanham Act' when the final refusal to register was assertedly based on the finding that the term is incapable of functioning as a service mark. However, the final refusal to register stated alternative grounds and the submission of additional evidence of distinctiveness indicates that applicant was aware that the evidence previously filed was not considered sufficient proof of secondary meaning by the Examining Attorney. Moreover, following his reconsideration, the Examining Attorney stated that 'the final refusal is reinstated'. While the Examining Attorney misstated the issue in his appeal brief, and although it may not be crystal clear, the appeal brief does discuss both points.
*2 Before turning to the issues, it is noted that we do not agree with applicant that the determination of the Examining Attorney who approved issuance of its registration on the Supplemental Register is an admission by the Office that the term is capable of acquiring distinctiveness. It is overwhelmingly agreed that a Supplemental Register registration is evidence of nothing more than the fact that the registration issued on the date printed thereon. See American Personnel, Inc. v. Management Recruiters of Richmond, Incorporated, et al, 165 USPQ 173 (Virginia Law and Equity Court of the City of Richmond 1970); Aloe Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ 246 (TTAB 1970); and andrea Radio Corporation v. Premium Import Co., Inc., 191 USPQ 232 (TTAB 1976). It is entitled to no presumptions of validity, ownership, use or priority. See Nabisco, Inc. v. George Weston Limited, 179 USPQ 503, n.4 (TTAB 1973). Thus, the Board is free to consider the issue of capability regardless of the prior registration, if that issue is before it.
There is no question that applicant's mark is descriptive of its services and applicant does not contend otherwise. However, the materials submitted by the Examining Attorney do not persuade us that this is such a highly descriptive term that it cannot attain the requisite distinctiveness. The Nexis/Lexis material submitted by the Examining Attorney consists of three stories, two of which refer to applicant's stores. In the third story the term is used as part of a headline. Since there is no way to determine what motivated the writer to so use the term, we have not given a great deal of weight to that reference. In any event, a single such reference is insufficient evidence to prove common or even wide use of the term to the extent that we can come to the same conclusion as the Examining Attorney as to the highly descriptive nature of the term. As to the photographs, each one uses a specific generic designation to modify the term 'outlet' i.e., mattress and furniture outlet, clothing and towel outlet or towel and jean outlet, so there is no doubt that these are generic designations. Applicant's mark is not so specific. The term THE CHILDREN'S OUTLET, while it certainly gives immediate information with regard to the services performed thereunder and is therefore merely descriptive of them, is a broader term leaving something to the imagination.
Since we find nothing of record to support the Examining Attorney's contention as to the highly descriptive nature of applicant's mark, we turn to the evidence submitted to prove distinctiveness. The affidavits show that at the time the application was filed in 1983, applicant had thirty stores in nine states. During the period following the filing, thirty-two stores were opened, expanding applicant's market to ten more states. Said stores are located in large shopping malls where there is exposure of the mark to a substantial segment of the public on a daily basis and where 5 million sales transactions occur each year. This exposure to the public and volume of sales over a period of several years persuades us that applicant has satisfied the requirement of secondary meaning.
*3 Accordingly, the refusal to register under Section 2(f) is reversed and applicant's mark will be published for opposition. In view of the foregoing, we need not consider the alternative ground of refusal.
D. B. Allen
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. Regn. No. 1,149,504, issued March 24, 1981 on the Supplemental Register, Section 8 affidavit accepted. It is noted that the declaration contains a typographical error reporting the Supplemental registration as No. 1,147,504. Applicant also claimed ownership of three registrations for the mark THE CHILDREN'S PLACE (one with design), Regn. No. 1,137,068, Regn. No. 1,020,742 and Regn. No. 1,020,741 all for retail store services.
FN2. It appears that these are three of eighteen stories found. Applicant objects to not having been provided with the remaining fifteen stories, as well, saying that they may have been supportive of applicant's position. With regard thereto, the Examining Attorney has the option of providing whatever material he or she feels is helpful in proving the point he or she is attempting to make. It is up to the applicant to rebut that evidence. Thus, while it may provide a more complete picture, the Examining Attorney is not obliged to file every story found in a Lexis/Nexis search. By the same token, we must assume that the three excerpts selected provide the best support of the Examining Attorney's refusal to register available from that source.
FN3. '. . . 3b: A retail store . . .' Webster's Third New International Dictionary.
I strongly disagree with the conclusion of the majority that the words THE CHILDREN'S OUTLET, 'OUTLET' being disclaimed, for retail children's clothing store services are registrable on the Principal Register on the showing here made by applicant under Section 2(f) of the Act. I would affirm the Examining Attorney's holding that the phrase sought to be registered is unregistrable on the Principal Register.
The record is fully sufficient to justify such a holding. It contains a dictionary definition of the word 'outlet' as 'a retail store.' The record also contains evidence that there are retail stores in other fields of merchandise which describe their establishments by the type of merchandise offered followed by the word 'Outlet,' such as 'Robbies Towel & Jeans Outlet' and 'Weldon Mattress & Furniture Outlet.' That is to say, the term 'outlet' appears to be commonly used to describe various types of retail stores. In addition, a headline accompanying an article from the Nexis computer search system refers to a new children's clothing store (Joey's Children's Wear) as a 'children's outlet,' as follows: 'The Careful Shopper; Children's Outlet Opens in Scarsdale.' [FN1] Moreover, applicant itself has disclaimed the word 'Outlet' apart from the mark, and has conceded on the record and at the oral hearing that the the term 'outlet' is synonymous with 'retail store.' Finally, while applicant has complained that the Examining Attorney has failed to point to other cases of use of the same phrase by competitors, applicant itself has indicated in its request for reconsideration, 6, filed October 25, 1985, that it has encountered three instances of use by others for retail store services, two of which occurred prior to the issuance of its Supplemental Register registration (over six years ago). (Applicant further indicates that in two of these cases the users discontinued use upon applicant's request.)
*4 On the basis of this record, I find it astonishing that the majority states that there is 'nothing of record' to support the Examining Attorney's determination that the phrase sought to be registered is highly descriptive.
While the majority finds applicant's mark to be merely descriptive, it nevertheless concludes that because the asserted mark leaves something to the imagination, that is, it does not completely describe the nature of applicant's retail children's outlet, it is not generic or so highly descriptive as to be incapable of registration. In so doing, the majority has apparently accepted applicant's argument, appeal brief, 7, that applicant's asserted mark could evoke the commercial impression of many different services:
One perceiving appellant's mark for the first time would not immediately conclude that appellant sells clothing as opposed to selling school supplies, selling toys, selling books, selling sporting goods, selling computer game software, providing travel agency services, operating summer camps, operating video game arcades, etc. While a prospective first time customer would conclude that appellant's services are of use or interest to children, the nature of those services are not immediately and/or particularly conveyed by the mark sought to be registered. Thus, appellant's mark, considered either in its entirety or without the disclaimed word 'outlet', does not describe appellant's services with immediacy or with any perceivable degree of particularity. To the contrary, upon seeing appellant's mark prospective customers must use imagination, thought and perception to reach a conclusion as to the nature of appellant's services.
This analysis is flawed because, as we have stated so many times before, a mark is not to be viewed in the abstract but must be viewed in relation to the specific goods or services in connection with which the mark is encountered by prospective purchasers. Considered in this light, I agree with the Examining Attorney that THE CHILDREN'S OUTLET is highly descriptive if not generic for these services. Thus, the fact that the specific type of children's outlet-- clothing--has been left out from applicant's asserted mark is not significant. See, for example, In re Abcor Development Corp., Inc. 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (GASBADGE described as a shortening of the name 'gas monitoring badge') [FN2]. In my view, this record supports the conclusion that the phrase THE CHILDREN'S OUTLET is understood by the public as referring to a genus or type of retail store service--a children's store. H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). While applicant argues that it is not necessary for competitors to use these words to compete effectively, and while there may be other generic terms to describe retail children's clothing store services, all generic terms should remain free for the trade and the public to use. In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring).
*5 Applicant's phrase is no more registrable than the phrase 'THE MEN'S STORE' would be. That common commercial designation is equally unspecific but I find it hard to believe that purchasers would ever come to view that designation as one of origin rather than of apt or common description. Moreover, THE CHILDREN'S OUTLET is an expression, like 'furniture store' and 'computer store,' which inherently has a meaning in ordinary language, and evidence that the public at large uses these words to identify similar services of others is not necessary. See In re D. C. Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 405 (CCPA 1982) and In re G. D. Searle & Co., 360 F.2d 650, 149 USPQ 619 (CCPA 1966). There is simply nothing fanciful or incongruous about this combination of descriptive components, nor is this a deviation from natural usage of the English language. These words are an apt descriptor for a retail store specializing in children's clothing. [FN3]
Rany L. Simms
FN1. I do not understand the majority's position that this evidence is of little weight '[s]ince there is no way to determine what motivated the writer.' Because the editor's headline demonstrates ordinary usage of the English language, this is not an example of literary license being used to bemuse or capture the reader's attention. It is deserving of more weight than the majority accords it.
FN2. The suggestion in the record (see, for example, applicant's response, 5, filed Nov. 16, 1984) that applicant's asserted mark is even misdescriptive because applicant does not sell children is facetious. No reasonable purchaser encountering THE CHILDREN'S OUTLET store on a shopping excursion would view the mark in this light.
FN3. I fully agree with the majority that the Supplemental Register registration does not foreclose us from determining the registrability on the Principal Register of the same designation. That is to say, the Board is not bound by the Examining Attorney's earlier determination to place that mark on the Supplemental Register. See In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985), In re BankAmerica Corporation 231 USPQ, 873, 875-76 (TTAB 1986) and cases cited therein. As we stated there:
Section 20 of the Trademark Act, 15 USC § 1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not and should not be delegated by the adoption of conclusions reached by Examining Attorneys on different records.
It follows, therefore, that applicant's argument that this Office cannot hold a mark previously registered on the Supplemental Register to be unregistrable without a showing of change in circumstances is without merit.