This Opinion is not a
`Precedent of the TTAB
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`Mailed: December 22, 2016
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
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`Trademark Trial and Appeal Board
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`In re Apex Development, LLC
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`Serial No. 86534471
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`Matthew H. Swyers of The Trademark Company, PLLC,
`for Apex Development, LLC.
`Vivian Micznik First, Trademark Examining Attorney, Law Office 114,
`K. Margaret Le, Managing Attorney.
`_____
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`
`Before Zervas, Wellington and Heasley,
`Administrative Trademark Judges.
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`Opinion by Zervas, Administrative Trademark Judge:
`Apex Development, LLC (“Applicant”) seeks registration on the Principal Register
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`of the proposed standard character mark Rentaweek for “Vacation real estate
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`timeshare services” in International Class 36, and “Hotel services; Making hotel
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`reservations for others; Resort hotel services” in International Class 43.1
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`1 Application Serial No. 86534471 was filed on February 13, 2105, under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b), based upon an allegation of a bona fide intention to use
`the mark in commerce.
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`Serial No. 86534471
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`The Examining Attorney determined that Rentaweek is merely descriptive of a
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`feature of Applicant’s identified services, and refused registration of Applicant’s mark
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`pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
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`After the refusal was made final, Applicant appealed the refusal. Briefs have been
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`filed by both Applicant and the Examining Attorney.
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`Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the
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`registration of a mark which, when used on or in connection with the goods or services
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`of the applicant, is merely descriptive of them. A term is merely descriptive if it
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`immediately conveys knowledge of a significant quality, characteristic, function,
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`feature or purpose of the goods or services it identifies. See, e.g., In re Chamber of
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`Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re
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`Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Determining the
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`descriptiveness of a mark is done in relation to an applicant’s identified goods and/or
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`services, the context in which the mark is being used, and the possible significance
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`the mark would have to the average purchaser because of the manner of its use or
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`intended use. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing
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`In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)).
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`Descriptiveness of a mark is not considered in the abstract. Id. In other words, the
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`question is whether someone who knows what the goods or services are will
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`understand the mark to convey information about them. DuoProSS Meditech Corp.
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`v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
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`2012).
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`- 2 -
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`Serial No. 86534471
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`The Examining Attorney maintains that “RENTAWEEK is a novel spelling of
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`RENT A WEEK, and the individual words RENT A WEEK describe the applicant’s
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`services of renting lodging by the week to others, and making reservations therefor,
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`by providing properties that can be rented in weekly increments.”2 We agree that the
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`proposed mark is merely descriptive of a feature of the services.
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`The proposed mark is a phrase, and when the phrase is merely descriptive of the
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`services, “it is unnecessary to engage in an analysis of each individual component.”
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`TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1209.03(d) (October
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`2016), citing In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998) (TARIFF
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`MANAGEMENT merely descriptive of computer hardware and computer programs
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`to control, reduce, and render more efficient wide area network usage.).
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`The website evidence introduced by the Examining Attorney with the first Office
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`Action uses the phrase “rent a week” or a similar phrase, to indicate to purchasers,
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`who are members of the general public, that particular properties, be they timeshares
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`or rooms in resort hotels, may be rented for one week:
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`● www.rent-a-week.com:
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`Vision
`To bring together families searching for quality and
`affordable vacations with
`timeshare owners while
`providing timesha1e owners with options to rent their
`weeks and to recover the cost of annual maintenance fees
`and taxes in the process. …
`Rent A Week
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`2 7 TTABVUE 5.
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`- 3 -
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`Serial No. 86534471
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`If you would like to rent a vacation week from us, please
`fill in the following and click submit.
`● www.grandmayan.net:
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`Rent A Week
`If you would like to rent a vacation week from us please fill
`in the following and click submit.
`● www.unitedbeachvacations.com:
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`Premier Property Lenora’s Cottage [-] Rent a week and
`save 10%.
`● www.facebook.com:
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`Cascais House – Rent a Week
`● www.barringtonshores.com:
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`Example 1: A) You rent a week B) Your family
`member/friend rents a week. C) 3rd Week – FREE!!3
`Applicant argues that there is a three-part test that may be used to determine if
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`a mark is suggestive rather than merely descriptive; imagination, competitors' need
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`to use, and competitors' use.4 The Board, however, stated as follows in In re Carlson,
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`91 USPQ2d 1198, 1203 (TTAB 2009), finding that this is not the test:
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`[W]e have considered applicant's argument that “the Board
`employs three tests to determine whether a mark is
`suggestive rather than descriptive: (1) the “competitors'
`need test,” (2) the “competitors' use test,” and (3) the degree
`of imagination test.” … Applicant bases this argument on
`No Nonsense Fashions Inc. v. Consolidated Foods Corp.,
`226 USPQ 502 (TTAB 1985). However, these “tests” were
`set out in an inter partes case in a discussion of whether
`use of a term by third parties on their packaging detracted
`from the plaintiff's trademark rights. Thus, to the extent
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`3 May 20, 2015 Office Action.
`4 5 TTABVUE 11.
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`Serial No. 86534471
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`that applicant is suggesting that the Office must prove all
`three points, applicant is incorrect. Since this decision
`issued in 1985, there have been numerous decisions from
`the Court of Appeals for the Federal Circuit and the Board
`making clear that the test for descriptiveness is whether a
`term “immediately conveys knowledge of a quality, feature,
`function, or characteristic of the goods or services with
`which it is used.” In re Bayer Aktiengesellschaft, 82
`USPQ2d at 1831, citing In re Gyulay, 820 F.2d 1216, 1217,
`3 USPQ2d 1009 (Fed. Cir. 1987). … There is no
`requirement that the Office prove actual competitor use or
`need; it is well established that even if an applicant is the
`only user of a merely descriptive term, this does not justify
`registration of that term. See In re BetaBattInc., 89
`USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems,
`Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson,
`225 USPQ 790, 792 (TTAB 1985).
`See also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016)
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`(“The three-part test described in No Nonsense Fashions has been superseded ….”).
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`Applicant also argues that its mark is unitary and has a suggestive meaning, with
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`an incongruity:
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`[T]his new unitary trademark creates a new, non-
`descriptive meaning, namely a suggestive term implying
`one could rent an actual week. However, the incongruity
`created by such a statement is that one does not rent
`temporal elements. Rather, one rents some good or service
`not time itself. Thus, the consumer is left with an
`impression, when viewing this service mark, that they
`rent, lease, or buy time as opposed to renting something for
`a period of time. This incongruity is further highlighted by
`the omission of the term "FOR" which would bring the
`overall impression more into a descriptive light as the
`examiner contends but, in the absence thereof, leaves it in
`the incongruity to move this mark in the direction of one
`that truly should be categorized as suggestive.5
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`5 5 TTABVUE 13.
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`Serial No. 86534471
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`We disagree. A unitary mark is one with a unique, non-descriptive meaning. An
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`example of such a mark is SUGAR & SPICE, which the predecessor court to our
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`primary reviewing court, the Court of Appeals for the Federal Circuit, found not
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`merely descriptive of bakery products but reminiscent of a nursery rhyme. In re
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`Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968). See also, In re Shutts,
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`217 USPQ 363, 364 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow
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`removal hand tool; “the idea of a ‘rake’ or ‘raking’ does indeed sit strange in terms of
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`application to snow”). There is no unique, non-descriptive meaning associated with
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`“rent a week.” Further, the asserted incongruity noted by Applicant, i.e., that one
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`does not rent a week but rather a “good,” presumably a house, a resort hotel room or
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`a condo, is not persuasive. The evidence in the record demonstrates use of “rent a
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`week,” in a natural manner with a clear meaning in connection with the weekly rental
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`of a timeshare or resort hotel, namely, the duration of the renter’s stay is one week.
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`In view of the forgoing, we conclude that Applicant’s proposed mark is merely
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`descriptive of a feature of Applicant’s International Class 36 services, “vacation real
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`estate timeshare services,” and a feature of Applicant’s International Class 43
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`services, “hotel services; making hotel reservations for others; resort hotel services”
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`in International Class 43.6
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`6 To be refused registration as merely descriptive, the mark in question need not describe all
`of the services identified in each of the classes in the application; it need only be merely
`descriptive of one of them in each class. See In re Chamber of Commerce of the U.S., 102
`USPQ2d at 1219; In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir.
`2005).
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`Serial No. 86534471
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`Decision: The refusal to register Applicant’s mark Rentaweek is affirmed for
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`both International Classes 36 and 43.
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