Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BONNI KELLER COLLECTIONS, LTD.
Serial No. 446,902
November 17, 1987
James E. Siegel, Henry A. Marzullo, Jr., Frank P. Presta, Howard N. Aronson and Nancy Dwyer Chapman for Bonni Keller Collections, Ltd.
Trademark Examining Attorney
Law Office 5
(Paul Fahrenkopf, Managing Attorney)
Before Simms, Krugman and Seeherman
A combined application has been filed by Bonni Keller Collections, Inc. to register LA LINGERIE in the form depicted below
on the Supplemental Register as a trademark for clothing, namely undergarments and as a service mark for retail store services in the field of clothing. [FN1] The term LINGERIE has been disclaimed apart from the mark as shown.
Registration has been refused under Section 23 of the Trademark Act on the ground that the designation sought to be registered is not capable of functioning as a mark to identify applicant's goods and services and distinguish them from like goods and services of others. Specifically, it is the position of the Examining Attorney that "la lingerie" is a French term meaning underclothing and that it is the foreign equivalent of the generic term for applicant's goods; that even considering the word "lingerie," as an English term, said term aptly names applicant's goods and the addition of the French article, being devoid of any source-indicating significance, does not affect the genericness of the term and that LA LINGERIE, therefore, is incapable of distinguishing applicant's goods from those of others.
With respect to the services, the Examining Attorney contends that the record shows that the central characteristic of applicant's retail store services is the sale of lingerie, such as negligees and gowns; that retail stores offering these goods are commonly known as "lingerie shops" or "lingerie stores" and that a term that is generic for the central characteristic of a service, such as the particular products sold, is incapable of functioning as a service mark.
Finally, it is the Examining Attorney's position that the presentation of LA LINGERIE in the form depicted above does not possess such a distinctive degree of stylization that the presentation of the term could be capable of distinguishing the goods and services.
In support of the refusal of registration, the Examining Attorney has introduced into the record copies of dictionary definitions of "lingerie" from Cassell's French Dictionary and Webster's New Collegiate Dictionary as well as several excerpts from articles extracted from the NEXIS research data base showing usage of the terms "lingerie shop(s)" and "lingerie store(s)." [FN2]
Applicant has appealed from the final refusal of registration, arguing that it is irrelevant to the question of registrability on the Supplemental Register whether the designation sought to be registered presently serves to identify applicant's goods and services and distinguish them from others; rather, the question to be determined is whether applicant's mark is capable of becoming distinctive. Applicant contends that its entire mark must be considered, including the design elements; that, in the present case, the Examining Attorney has improperly dissected the mark, and has determined that since the root word of the mark may be unregistrable, the entire mark is unregistrable. Applicant points to a number of cases wherein it was decided that the designations involved therein were registrable even though the word portions were generic or entirely descriptive of the goods. [FN3] Applicant argues that its mark may be a better candidate than the marks involved in those cases since its mark consists of a descriptive term plus a French article. Applicant further points to the stylized display of its mark, contending that it is as visually distinctive as any of the marks in the cited cases; that its mark appears with double "L's," each having a stylized corkscrew tail and that the letter "E" at the end of "LINGERIE" also bears an elongated tail. Applicant concludes that its distinctive design elements combined with the alliterative nature of the mark and the foreign article "LA" create a composite mark which possesses more than sufficient distinctiveness and distinguishability to render the mark capable of indicating the source of applicant's goods and services.
*2 Since applicant's multiple-class application seeking registration for goods and services is, actually, two separate applications combined for the convenience of applicant and the Office, and since the issues as they pertain to the two classes are different, we believe it is appropriate in this case to separately discuss the relevant issues as they pertain to the goods on the one hand and the services on the other.
Turning first to the goods, they are identified as clothing, namely, undergarments. It is clear to us, and applicant does not seriously question the fact, that the term "lingerie," both as a French and English word, is an apt descriptive or generic designation for undergarments. An excerpt from Webster's Deluxe Unabridged Dictionary, made of record herein, defines "lingerie" as a word of French origin meaning "women's underwear of linen, silk, rayon, etc." An excerpt from Webster's New Collegiate Dictionary, made of record herein, similarly defines "lingerie" as "women's intimate apparel." In addition, an excerpt from Cassell's French Dictionary, made of record herein, defines the French word "lingerie" as a feminine noun meaning, inter alia, linen goods such as collars, cuffs, underclothing etc.
In view of the foregoing and noting applicant's disclaimer of LINGERIE apart from the mark as a whole, the genericness of the term as applied to the goods cannot seriously be questioned.
While applicant has placed the French article "la" before the generic term "lingerie," the record shows that the origin of "lingerie" is from the French language and that it has become an English term through usage, as is the case with many other terms. See: In re Le Sorbet, Inc., 228 USPQ 27, 29 (TTAB 1985). As in the Le Sorbet case, where LE SORBET was found to be a French term, we find the designation LA LINGERIE to be a French term and the only significance of "la" in the term sought to be registered is that it is the feminine definite article in French, preceding the feminine French noun, "lingerie." Moreover, as was the situation in the Le Sorbet case, where the French article "le" preceded the noun, the fact that the term sought to be registered herein is LA LINGERIE, rather than LINGERIE, is of no aid to applicant since LA LINGERIE is a generic term for the goods in the French language and, in the French language, the use of the definite article "la" or "le" with the noun it modifies is much more common than is the equivalent "the" in the English language. See: Le Sorbet, supra, at p. 31. Also, distinguish: In re Universal Package Corp. 222 USPQ 344 (TTAB 1984) (LE CASE held registrable for jewelry boxes and gift boxes not made of precious metal) wherein the Board noted that the term sought to be registered comprised a French article and an English noun.
We are aware that the Le Sorbet case concerned an application on the Principal Register to register the term LE SORBET for, inter alia, fruit ices. Nevertheless, the holding of the Board was clearly based on the Board's belief that LE SORBET was the generic name of the goods. While the instant application seeks registration on the Supplemental Register, we find LA LINGERIE to be the generic name for the goods and, as such, we conclude that the term is unregistrable on the Supplemental Register for the reason that a generic term is incapable of functioning as a trademark to distinguish applicant's goods.
*3 Having concluded that the term LA LINGERIE is incapable of performing a trademark function for lingerie, we now turn to the question of whether the designation sought to be registered is nevertheless capable of distinguishing the goods because of the style in which the words LA LINGERIE are displayed. In order for a term otherwise unregistrable to be capable of distinguishing an applicant's goods, the presentation of the term must be sufficiently distinctive so as to create a commercial impression separate and apart from the unregistrable components whereby it is possible to disclaim those unregistrable components and still have a mark which is registrable as a whole. See: In re Carolyn's Candies, Inc., supra. Recognizing that the determination of whether the stylization of an otherwise unregistrable designation is sufficiently distinctive in character to "rescue" the designation as a whole is a necessarily subjective one, it is our view that the presentation of applicant's mark simply does not possess the degree of stylization necessary to warrant allowance on the Supplemental Register. We believe that the Carolyn Candies, Jackson Hole and Wella cases, supra, relied on by applicant, all involved styles of display of words more fanciful, eye catching and imaginative than that involved herein. We find the presentation of applicant's LA LINGERIE to be rather ordinary and nondistinctive in appearance and closer in style to the display of the BODY SOAP designation in the case of In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB 1983).
Since we find that the subject matter presented for registration is composed of a generic notation and that the lettering style, while somewhat embellished, is relatively ordinary, we conclude that the impact of the stylization of lettering is lost in the significance the term sought to be registered has as a generic notation and that the refusal of registration is proper.
Turning to the question of the capability of LA LINGERIE to function as a service mark to identify applicant's retail store services in the field of undergarments, we have held that a term which is a common descriptive name for a central characteristic of a service is incapable of distinguishing the service from like services of others. See: In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE held incapable of functioning as a service mark to identify applicant's mail-order and distributorship services in the field of wicker furniture and accessories); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES in stylized presentation held apt descriptive term for services including retail book and record stores where one could purchase books, records and magazines at half price); In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS held incapable of distinguishing services of arranging and conducting seminars in the field of business law.
*4 In the present case, there is no question that a central characteristic of applicant's retail store services is the sale of lingerie. While applicant's stores may carry a variety of products, some of which would not be characterized as lingerie, it is clear from the specimens of record and from a copy of a newspaper article made of record herein concerning the opening by applicant of a new store that applicant's stores specialize in or feature the sale of lingerie and that applicant's stores may accurately be characterized as lingerie shops, lingerie stores or lingerie boutiques. We conclude that the term LINGERIE cannot distinguish the services of the retail selling of lingerie and that the addition of the French feminine article "la" to the noun "lingerie" results in the French term LA LINGERIE which is the foreign equivalent of an apt name for a type of retail clothing store, that is, a retail clothing store commonly referred to as a lingerie store or lingerie shop. That this is a commonly used generic term for a type of store, i.e., a store featuring the sale of lingerie, is amply demonstrated by the NEXIS evidence showing third-party use of "lingerie shop(s)" and "lingerie store(s)" in their ordinary sense. As was the situation regarding the capability of LA LINGERIE to function as a trademark for women's undergarments, we hold that the degree of stylization of the presentation of LA LINGERIE is insufficient to render that otherwise unregistrable term registrable on the Supplemental Register.
In conclusion, we believe that our holding that LA LINGERIE is incapable of distinguishing applicant's goods and/or services is fully supported by the holding in H. Marvin Ginn Corp. v. International Association of Fire Chief's, Inc., 782 F.2d 987, 228 USPQ 528 (Fed.Cir.1986). In that case, the Court set out a two-part inquiry to determine genericness. First, we must determine the genus of goods (or services) at issue and second, we must determine whether the term sought to be registered would be understood by the relevant public primarily to refer to that genus of goods (or services).
In the present case, defining the genus of goods as lingerie or women's undergarments, we conclude that LA LINGERIE, being the foreign equivalent of women's underclothing, would clearly be understood by the purchasing public to refer to that genus of goods.
Similarly, defining the genus of services as retail clothing store services featuring the sale of lingerie, that is, lingerie shops, we conclude that purchasers would clearly understand LA LINGERIE to refer to that genus of services.
For the foregoing reasons, we conclude that the refusal of registration is well taken as to both classes and that the designation LA LINGERIE in the form presented is not capable of distinguishing either applicant's goods or services from those of others.
Decision: The refusal of registration is affirmed as to both classes.
R. L. Simms
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 446,902 filed October 6, 1983 on the Principal Register and amended to the Supplemental Register on April 23, 1985.
FN2. These excerpts were timely submitted by the Examining Attorney in connection with the Office action mailed May 13, 1986. Applicant, with its reply brief, has objected to the NEXIS excerpts submitted with the Examining Attorney's appeal brief, arguing that they are untimely filed pursuant to Trademark Rule 2.142(d). While applicant is correct in its assertion that evidence not made of record during prosecution of the application generally cannot be considered by the Board, a review of the NEXIS evidence attached to the Examining Attorney's appeal brief shows that said evidence is identical to that which was timely submitted in connection with the May 13, 1986 Office action.