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`This Opinion is Not a
`Precedent of the TTAB
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`Mailed: October 16, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Shimano North America Holding, Inc.
`_____
`
`Serial No. 88185346
`_____
`
`Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP,
`for Shimano North America Holding, Inc.
`
`Rebecca Eubank, Trademark Examining Attorney, Law Office 116,
`Elizabeth F. Jackson, Managing Attorney.
`
`_____
`
`
`Before Thurmon, Deputy Chief Administrative Trademark Judge,
`Greenbaum and Heasley, Administrative Trademark Judges.
`
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`Opinion by Greenbaum, Administrative Trademark Judge:
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`I. Background
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`Shimano North America Holding, Inc. (“Applicant”) seeks registration on the
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`Principal Register of the mark FLAT-SIDE (in standard characters) for
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`Fishing lures; Lures for fishing, in International Class 28.1
`
`
`1 Application Serial No. 88185346 was filed on November 7, 2018, based upon Applicant’s
`claim of first use anywhere and use in commerce since at least as early as 2007.
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`Serial No. 88185346
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`The Trademark Examining Attorney has refused registration of Applicant’s
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`proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as
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`merely descriptive of the identified goods.
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`When the refusal was made final, Applicant requested reconsideration, which was
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`denied. On October 29, 2019, Applicant timely filed a notice of appeal, and again
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`requested reconsideration. When the October 29, 2019 Request for Reconsideration
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`was denied, this appeal resumed.2 The appeal is fully briefed. We affirm the refusal
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`to register.
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`II. Applicable Law
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`In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
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`prohibits registration of a mark on the Principal Register that, when used in
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`connection with an applicant’s goods, is merely descriptive of them. 3 “A term is merely
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`descriptive if it immediately conveys knowledge of a quality, feature, function, or
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`characteristic of the goods or services with which it is used.” In re Chamber of
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`Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
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`(quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). See
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`also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). By
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`2 Due to a procedural anomaly, Applicant filed its Appeal Brief before the Examining
`Attorney acted on the October 29, 2019 Request for Reconsideration. The Board therefore
`allowed Applicant time to file a Supplemental Brief. 8 TTABVUE. Applicant declined this
`opportunity.
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`3 “No trademark by which the goods of the applicant may be distinguished from the goods of
`others shall be refused registration on the principal register on account of its nature unless
`it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the
`applicant is merely descriptive ….” 15 U.S.C. § 1052(e)(1).
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`Serial No. 88185346
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`contrast, a mark is suggestive if it “requires imagination, thought, and perception to
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`arrive at the qualities or characteristics of the goods.” In re Gyulay, 820 F.2d 1216, 3
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`USPQ2d 1009, 1009 (Fed. Cir. 1987). Suggestive marks, unlike merely descriptive
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`terms, are registrable on the Principal Register without proof of acquired
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`distinctiveness. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330,
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`71 USPQ2d 1173, 1180 (Fed. Cir. 2004).
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`Whether a mark is merely descriptive is determined in relation to the goods for
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`which registration is sought and the context in which the mark is used, not in the
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`abstract or on the basis of guesswork. Bayer, 82 USPQ2d at 1831; see also In re Abcor
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`Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). In other words, we
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`evaluate whether someone who is familiar with the goods will understand the mark
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`to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices
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`Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not
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`immediately convey an idea of each and every specific feature of the goods in order to
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`be considered merely descriptive; it is enough if it describes one significant attribute,
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`function or property of the goods. See Gyulay, 3 USPQ2d at 1010. In addition, the
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`descriptiveness analysis concentrates on the identification of goods set forth in the
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`application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed.
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`Cir. 2016) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16
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`USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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`“Evidence of the public’s understanding of [a] term … may be obtained from any
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`competent source, such as purchaser testimony, consumer surveys, listing in
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`Serial No. 88185346
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`dictionaries, trade journals, newspapers and other publications,” Real Foods Pty Ltd.
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`v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)
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`(quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046
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`(Fed. Cir. 2018)), as well as “labels, packages, or in advertising material directed to
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`the goods ….” Abcor, 200 USPQ at 218. It may also be obtained from websites and, in
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`the case of a use-based application or registration, an applicant’s or registrant’s own
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`specimen of use and any explanatory text included therein. In re N.C. Lottery, 866
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`F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d
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`1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001).
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`III. Analysis
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`Applicant contends that the proposed mark FLAT-SIDE is suggestive of the
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`identified fishing lures because the goods feature two sides that are curved, and
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`neither side is flat.4 App. Br., 4 TTABVUE 4-5. The Examining Attorney asserts that
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`FLAT-SIDE is descriptive of the identified goods because it immediately describes a
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`feature of the goods, namely, fishing lures where one side is flatter than the other,
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`and that the consuming public would understand FLAT-SIDE to refer to that feature
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`of the fishing lures. Ex. Atty. Br., 10 TTABVUE 4.
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`“Flat” is defined as “having a continuous horizontal surface,” “being or
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`characterized by a horizontal line or tracing without peaks or depressions” or “having
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`a relatively smooth or even surface,” and “side” is defined as the “surface of an object,
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`4 During prosecution, Applicant referred to both sides of its lure as asymmetrically rounded.
`April 4, 2019 Response to Office Action, TSDR 4.
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`Serial No. 88185346
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`especially a surface joining a top and bottom.” February 14, 2019 Office Action, TSDR
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`5-6 (quoting Merriam-Webster.com and AHDictionary.com). The Examining Attorney
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`asserts that “[e]ven taking into consideration the applicable definitions from the
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`numerous definitions applicant has provided, the term describes a surface that is
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`smooth, even, or level.” Ex. Atty. Br., 10 TTABVUE 5. She contends that, based on
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`the dictionary definitions alone and in relation to Applicant’s identified goods, the
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`term “flat side” merely describes asymmetrically rounded fishing lures, that is,
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`fishing lures that feature one side that is more horizontal, even or smooth than the
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`other.
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`There is no dispute that Applicant’s goods do not have a side that is entirely flat,
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`as that term is strictly defined. However, the Examining Attorney submitted ample
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`evidence from third party providers of fishing lures demonstrating that sellers,
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`purchasers and users of lures commonly refer to fishing lures that have a relatively
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`smooth or even surface (as compared to the other side) as “flat side” lures or jigs,5 or
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`lures that have a “side” that is “flat” (emphasis added):
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` Peace Token Fishing Tackle offers “PEACE TOKEN’S TUNA METAL JIG
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`– FLAT SIDE MACKEREL” lure. February 14, 2019 Office Action, TSDR
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`7-8.
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`5 A “jig” is a type of fishing lure. See evidence from Wikipedia and BassResource.com attached
`to April 4, 2019 Response to Office Action, TSDR 20-27.
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`- 5 -
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`Serial No. 88185346
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` The Tackle Room sells a “Flat Side Jig 6 Pack by Reeldiculous Fishing”
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`described as follows: “These flat side jigs are a rear/center balanced jig that
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`performs excellent in vertical drop situations.” Id., TSDR 9-10.
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` Everhart’s Outdoor Store offers several types of “Strike King KVD 1.5 Flat
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`Side Crankbait” described as follows: “Designed by Kevin VanDam to have
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`a slender modified flat side for erratic thumping action with a body similar
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`to the KVD 1.5 Square Bill, making this bait perfect to reach those fish
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`down to 8 feet.”6 Id., TSDR 11-12.
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` BICO Jigs highlights the “flat side” feature of their lures: “The jig features
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`a flattened head, which offers particular benefits. For one, the contour
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`makes it skip on the surface better than conventional. The heads are made
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`lead-free in order to increase size without adding extra weight. This gives
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`the flat side of the jig a wider surface area, which allows it to skip
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`exceptionally well.” April 30, 2019 Final Office Action, TSDR 5-7.
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` Jacksonville Fishing Trips describes the best jig heads “for targeting
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`inshore fish in northeast Florida”: “The first step to catching inshore
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`saltwater fish with artificial lures is picking out a jig head. … The standard,
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`double eye, flat side jig head in both 1/8 and ¼ ounce weights are great
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`choices ….” Id., TSDR 8-10.
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`6 Outdoor Pro Shop also offers the Strike King KVD Flat Side Crankbait. April 30, 2019
`Final Office Action, TSDR 16.
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`Serial No. 88185346
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` Palomar, a provider of lures, touts the “Reeldiculous Flat Side ‘Slammer’”
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`as “the best flat-side jig, hands down. It’s an asymmetric 3D designed jig
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`….” Id., TSDR 11-13.
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` HanapaaFishing.com offers the “HP JIG FLATSIDE LURE” described as
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`follows: “One side is colored and ridged, other side is flat and silver.” Id.,
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`TSDR 14-15.
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` Jigging World offers the “Jigging World Flat Side Jig” for sale on
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`Amazon.com. Id., TSDR 17.
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`Based on the evidence, we have no doubt that anglers who see the proposed mark
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`FLAT-SIDE used on fishing lures immediately would understand that the lures
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`feature one side that has a relatively smooth or even surface compared to the other.
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`The definitions of the words in the mark show their descriptiveness in this context,
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`and as discussed below, the combination of FLAT and SIDE does not evoke a new and
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`unique commercial impression. Accordingly, the proposed mark is merely descriptive
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`of the identified goods.
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`We do not find persuasive Applicant’s arguments that the proposed mark is
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`suggestive because there are multiple definitions of the word “flat.” As we stated
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`above, we must consider the meaning of a term in relation to the identified goods, not
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`in the abstract. See Bayer, 82 USPQ2d at 1831; Abcor, 200 USPQ at 218. The evidence
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`supports a finding that anglers who encounter the term FLAT-SIDE on Applicant’s
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`identified goods would immediately understand that the lures feature one side that
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`is more flat, and conversely, one side that is more round, than the other. This is
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`Serial No. 88185346
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`particularly true given the various third party providers of fishing lures in the
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`marketplace who use the term “flat side” to describe asymmetrical fishing lures, as
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`discussed above.
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`Applicant points to two articles as evidence that its “jigs have been recognized in
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`a number of media outlets popular in the industry….” App. Br., 4 TTABVUE 6. The
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`article from THE FISHERMAN MAGAZINE titled “Jig & Pop: Run & Gun Tuna” by Capt.
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`Jack Sprengel contains a single buried reference to Applicant’s goods “Shimano Flat-
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`side Jigs,” one of three lures that the author prefers to use. October 4, 2019 Request
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`for Reconsideration, TSDR 91-94 (listed on TSDR 92). And the November 2, 2011
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`article from SPORT FISHING MAGAZINE, titled “24 Great Metal Jigs” by Doug Olander,
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`also contains only a single reference to Applicant’s goods, listed as “Butterfly Flat-
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`Side Jigs.” Id., TSDR 95-135 (listed on TSDR page 99). This article also includes a
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`“manufacturer’s tip”: “Try counting in a rhythmic cadence to get used to ‘walking’ the
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`flat-side jig.” (emphasis added). Neither article uses the term FLAT-SIDE in a source
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`identifying manner, and thus this evidence does not support a finding that consumers
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`would understand or use that term to refer solely to Applicant’s goods. Moreover, the
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`use of “flat-side” in the “manufacturer’s tip” indicates that “flat-side” is a type of jig.
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`Id. at TSDR 99. Such usage provides additional support for our finding above that
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`“flat-side” is merely descriptive of a feature of the identified goods.
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`Further, to the extent Applicant is arguing that it is the first user of the
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`designation FLAT-SIDE for its identified goods, the fact that an applicant may
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`be the first or only user of a merely descriptive designation does not necessarily
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`Serial No. 88185346
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`render a word or term incongruous or distinctive; as in this case, the evidence
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`shows that FLAT-SIDE is merely descriptive of the goods at issue. See In re Fat
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`Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon
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`Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TRADEMARK MANUAL OF
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`EXAMINING PROCEDURE (TMEP) § 1209.03(c) (Oct. 2018).
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`Although Applicant argues that “every example of third-party use of FLAT-SIDE
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`in the record is a third-party that has appropriated FLAT-SIDE, or something
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`similar, to designate a product” is an infringing use (App. Br., 4 TTABVUE 7), and
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`that it has taken action to halt such alleged infringing use, it does not appear that
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`Applicant, based on the record, has been successful in enjoining third -parties from
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`using the designation. Indeed, the record consists of two cease and desist letters that
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`Applicant characterizes as “not one hundred percent effective.” October 29, 2019
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`Request for Reconsideration. In any event, even if the evidence did demonstrate that
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`Applicant’s competitors may have agreed to discontinue use of the designation “flat
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`side” or “FLAT-SIDE” upon threat of legal action by Applicant, such action may show
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`a desire by those competitors to avoid litigation, rather than demonstrating the
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`distinctiveness of the wording. See In re Wella Corp., 565 F.2d 143, 196 USPQ 7, n.2
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`(CCPA 1977); In re Consolidated Cigar Corp., 13 USPQ2d 1481, 1483 (TTAB 1989).
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`Cf. In re Cree, Inc., 818 F.3d 694, 118 USPQ2d 1253, 1259 (Fed. Cir. 2016) (because
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`it is cheaper to take a license than defend a patent infringement action, licenses are
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`often entered into to avoid litigation).
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`Serial No. 88185346
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`Moreover, by arguing that all of the third-party uses are infringing uses, Applicant
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`essentially has conceded that the evidence describes a product that is identical to, or
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`nearly identical to, Applicant’s identified fishing lures. And because the evidence of
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`third-party uses amply demonstrates that consumers understand the term “flat side”
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`to merely describe a feature of fishing lures, namely, lures with a relatively smooth
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`or even side, consumers also would understand that Applicant’s fishing lur es have
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`the same type of “flat side” as the third-party fishing lures.
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`Finally, the use of the hyphen between the terms FLAT and SIDE does not obviate
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`a finding of mere descriptiveness. See e.g., In re Vanilla Gorilla, L.P., 80 USPQ2d
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`1637, 1640 (TTAB 2006) (finding that the presence of a hyphen in the mark “3-0’s”
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`does not negate mere descriptiveness of mark for automobile wheel rims).
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`A combination of descriptive terms may be registrable if the composite creates a
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`unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc.,
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`394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”);
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`In re Shutts, 217 USPQ 363, 365 (TTAB 1983) (SNO-RAKE for “a snow removal hand
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`tool having a handle with a snow-removing head at one end, the head being of solid
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`uninterrupted construction without prongs”). However, the mere combination of
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`descriptive words does not necessarily create a nondescriptive word or phrase. In re
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`Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component
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`retains its descriptive significance in relation to the goods, the combination results in
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`a composite that is itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171,
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`71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v.
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`- 10 -
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`Serial No. 88185346
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`Comm’r, 252 U.S. 538, 543 (1920)); In re King Koil Licensing Co., 79 USPQ2d 1048,
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`1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of
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`beds, mattresses, box springs, and pillows where the evidence showed that the t erm
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`“breathable” retained its ordinary dictionary meaning when combined with the term
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`“mattress” and the resulting combination was used in the relevant i ndustry in a
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`descriptive sense). We find that to be the case here.
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`IV. Conclusion
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`For the reasons discussed, we conclude that the relevant consumers, anglers,
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`would immediately understand FLAT-SIDE, when used on Applicant’s identified
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`fishing lures, to immediately describe a key feature of them. Furthermore,
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`Applicant’s competitors who might offer similar goods should have the opportunity to
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`use “flat side” or variations thereof to explain a significant feature or characteristic
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`of their goods. See In re Boston Beer Co., L.P., 47 USPQ2d 1914, 1920-21 (TTAB 1998),
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`aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); Abcor, 200 USPQ at 217 (“The
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`major reasons for not protecting [merely descriptive] marks are … to maintain
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`freedom of the public to use the language involved, thus avoiding the possibility of
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`harassing infringement suits by the registrant against others who use the mark when
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`advertising or describing their own products.”).
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`Decision: The refusal to register Applicant’s proposed mark FLAT-SIDE is
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`affirmed.
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`- 11 -
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