Axel Ltd, Co.

Trademark Trial and Appeal Board

Jun 16, 2016

No. 86418459 (T.T.A.B. Jun. 16, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Axel Ltd, Co.
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Serial No. 86418459
_____

Matthew H. Swyers of The Trademark Company, PLLC,
for Axel Ltd., Co.
Timothy Schimpf, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Wellington, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Axel Ltd, Co. (“Applicant”) seeks a Principal Register registration for the mark
THRIFTER, in standard characters, for the following services:
On-line retail store services featuring a wide variety of
consumer goods of others in International Class 35; and

On-line social networking services in International Class
45.1

1 Application Serial No. 86418459 was filed on October 8, 2014, under Section 1(b) of the
Trademark Act, based on an intent to use the proposed mark in commerce.
Serial No. 86418459
2

The Examining Attorney refused registration of the mark under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that it is merely descriptive
of Applicant’s services. The Examining Attorney also refused registration based on
Applicant's failure to comply with a final requirement pursuant to Trademark Rule
2.61(b) that it supply certain information which the Examining Attorney deemed
necessary for proper examination of the application.
After the refusals became final, Applicant appealed. Applicant and the Examining
Attorney filed briefs.
Information Requirement Refusal
Rule 2.61(b) provides that “[t]he Office may require the applicant to furnish such
information ... as may be reasonably necessary to the proper examination of the
application.” Noncompliance is a proper ground for refusing registration. In re AOP
LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); see also, In re Cheezwhse.com Inc., 85
USPQ2d 1917, 1919 (TTAB 2008); In re DTI Partnership LLP, 67 USPQ2d 1699, 1701
(TTAB 2003); and TMEP § 814 (2015). Indeed, a failure to comply with a 2.61(b)
requirement may be a sufficient basis in and of itself for refusal of registration. DTI
P'ship, 67 USPQ2d 1699 (affirming refusal to register under Rule 2.61 without
reaching substantive refusal under Trademark Act § 2(e)(1)).
Requests for information should be clear and “reasonably necessary” for
examination. See In re SPX Corp., 63 USPQ2d 1592, 1597 (TTAB 2002) (affirming
requirement under Trademark Rule 2.61(b) “because . . . the request for information
was reasonable”). The examining attorney otherwise has considerable discretion in
Serial No. 86418459
3

deciding whether and what type of information should be requested pursuant to
Trademark Rule 2.61(b). It stands to reason that the examining attorney needs to
understand the nature of the goods and services at issue, the meaning of the mark,
and its significance in the relevant trade or industry. When an application is based
on an intent to use the mark in commerce, as here, further information may be needed
since specimens will not be of record and evidence of the applicant's actual use is often
unavailable.
In the first Office Action, the Examining Attorney requested Applicant to provide
“additional information about [Applicant’s] services,” specifically:2
. . . fact sheets, brochures, and/or advertisements. If these materials are
unavailable, applicant should submit similar documentation for services of
the same type, explaining how its own services will differ. If the services
feature new technology and no information regarding competing services
is available, applicant must provide a detailed factual description of the
services.

In the same Office action, the Examining Attorney elaborated:
The submitted factual information must make clear what the services are
and how they are rendered, their salient features, and their prospective
customers and channels of trade. Conclusory statements regarding the
services will not satisfy this requirement for information.

As part of the information, applicant should answer the following
questions:

1. Explain the term THRIFTER in the context of the identified services.
2. Can the term THRIFTER be defined as a person who shops at thrift
stores?
3. Will applicant sell previously owned goods in the online retail store? and
4. Will applicant’s social networking services be related to shopping?

2 Office action issued on January 30, 2015.
Serial No. 86418459
4

In its response to the first Office action, Applicant curtly acknowledged the
Examining Attorney’s information request, stating that with respect to the
“requested additional information … Applicant represents there is none as it is an
intent-to-use application … .”3 Applicant did not answer any of the four itemized
questions nor did Applicant follow, or explain why it could not follow, the Examining
Attorney’s instruction that “[i]f these materials are unavailable, applicant should
submit similar documentation for services of the same type, explaining how its own
services will differ.”
In the second Office action, the Examining Attorney repeated and made final the
same requirement for information. He noted that “[i]n the response applicant stated
that as the application is an intent to use application there is no evidence to submit,”
but “even if applicant has not started offering these services, applicant was instructed
to submit similar documentation for services of the same type, explaining how its own
services will differ.”4
In its appeal brief, Applicant only addressed the information requirement to argue
that the Examining Attorney’s need for such information undercuts the legitimacy of
the descriptiveness refusal:5
Evidence of this fact can be found insofar as the Examining Attorney
requested additional information about the proposed use of the mark.
Applicant represented that there was none as it is an intent-to-use
application. It seems somewhat impossible to therefor maintain a refusal

3 Applicant’s response filed on June 4, 2015.
4 Office Action issue on June 19, 2015.
5 4 TTABVUE 12.
Serial No. 86418459
5

on merely an assumption of descriptive (sic) in the absence of any evidence
thereof.

We find that the Examining Attorney’s requirement for additional information
was appropriate and that Applicant failed to comply with it. In particular, the
Examining Attorney posed clear and well-directed questions attempting to ascertain
information regarding Applicant’s mark and the recited services. Applicant made no
attempt to answer the questions or otherwise comply with the requirement except to
state that its application was based on an intent to use and there was no additional
information to provide. Applicant did not heed the Examining Attorney’s instruction
that, in the event Applicant has no materials such as fact sheets, brochures, and/or
advertisements for its own services, Applicant should provide documentation
involving services of the same type with an explanation how Applicant’s services will
differ. In DTI Partnership, which also involved an intent-to-use application, the
Board affirmed an information request refusal and explained the options available to
the applicant, noting that failure to respond was not one:
[Applicant] may comply with the request by submitting the required
advertising or promotional material. Or it may explain that it has no such
material, but may submit material of its competitors for similar goods or
provide information regarding the goods on which it uses or intends to use
the mark. Or it may even dispute the legitimacy of the request, for
example, if the goods identified in the application are such ordinary
consumer items that a request for information concerning them would be
considered unnecessary and burdensome. What an applicant cannot do,
however, is to ignore a request made pursuant to Trademark Rule 2.61(b),
as applicant has here.

DTI, 67 USPQ2d at 1701, citing In re SPX Corporation, 63 USPQ2d 1592, 1597
(TTAB 2002).
Serial No. 86418459
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Put simply, it was within the Examining Attorney's discretion to ask such
questions, request such information, and refuse registration when the requirement
went unsatisfied.
Accordingly, we affirm the refusal to register based on Applicant’s failure to
comply with the 2.61(b) information requirement. Again, this refusal, by itself, is a
sufficient basis for refusing registration. Id. at 1699. Nevertheless, for sake of
completeness, we now address the descriptiveness refusal under Trademark Act §
2(e)(1).
Descriptiveness Refusal -- Applicable Law
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the services for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009) (Fed. Cir. 1987)); and In re Abcor Development, 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each
and every specific feature of the services in order to be considered merely descriptive;
rather, it is sufficient that the mark describes one significant attribute, function or
property of the services. In re Chamber of Commerce of the United States of America,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a mark is merely descriptive is determined not in the abstract, but in
relation to the services for which registration is sought, the context in which it is
Serial No. 86418459
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being used on or in connection with the services, and the possible significance that
the mark would have to the average purchaser of the services because of the manner
of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that
“[t]he question is not whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is whether someone who knows
what the goods or services are will understand the mark to convey information about
them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The Record
The Examining Attorney has the burden of creating a record that, prima facie,
shows that the proposed mark is merely descriptive of Applicant's services, as
described in each class. Gyulay, 3 USPQ2d at 1010; In re Accelerate s.a.l., 101
USPQ2d 2047, 2052 (TTAB 2012).
In support of the refusal, the Examining Attorney has submitted evidence showing
that THRIFTER is a recognized term for an avid shopper of thrift stores. He has
submitted the following from Urban Dictionary (www.urbandictionary.com):6
Someone that religiously shops at Thrift Stores looking for bargains and
often scores amazing deals. Often dedicated to recycling and reuse products
to keep our planet “greener.”

In addition, he submitted various online articles and website printouts showing third-
party use of the term “thrifter” consistent with the Urban Dictionary definition. For
example:
“10 Questions About Vintage Every Thrifter Should Ask” …Vintage
Fashion Facts: What Thrifters Should Know …There comes a time in

6 Submitted with Office action issued on January 30, 2015.
Serial No. 86418459
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every thrifter’s experience of secondhand shopping when they begin to
spot something ‘special’ between the racks. … Not every thrifter is or
wants to be a vintage lover, but eventually the time will come when a
vintage garment catches a thrift lover’s eye…
[article from Ebay online auction website, www.ebay.com];7

Thrifter of the Month
… Like most hardcore thrifters, I can point to nearly everything in my
house and say, ‘I bought that at a thrift store.’
[third-party blog or website describing writer’s thrift store shopping,
www.thethriftshopper.com];8

Kids’ Culture: Finding a Thrifter’s Paradise
Check out these low-cost alternatives for Back-to-School shopping. … This
is like Valhalia for the thrift-store aficionado.
[article in an informational website for parents, www.parentspress.com];9

Thrift shopping: What’s old can be new again
… the number of thrift stores operating nationally has jumped 14 percent.
… Whether you’re an experienced thrifter or a newbie to the trend, these
tips can you master the craft of buying used and save you some serious
cash.
[online article from the Las Vegas Sun, January 27, 2015
www.lasvegassun.com];10

Style Profile: Thriving thrifter Jen Meneely
… The self-proclaimed ‘big thrifter’ spends at least 20 hours per week
haunting the racks of Goodwill, the Cottage Thrift Shop and the Charity
Guild to find her prized pieces.
[online article from the Houston Chronicle, January 27, 2015,
www.chron.com];11

High Plains Thrifter
About me THRIFT-STORE SHOPPER
My name is Meghan and I’m the deal seeking, nacho eating, vintage loving
lady that shares her Twin Cities thrifting adventures …

7 Id.
8 Id.
9 Id.
10 Id.
11 Id.
Serial No. 86418459
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[a blog describing the writers visits and purchases from various thrift
stores, www.highplainsthrifter.net];12

Beach Thrifter
THRIFTING FOR FUN AND RESALE IN VIRGINIA BEACH
[blog website offering guide to thrift stores in Virginia Beach, VA,
www.beachthrifter.blogspot.com];13

Thrift shop makeovers Shoppers are benefitting from the battel between
area second-hand shops, as new competition is forcing every store to raise
its game … An event like the re-fashionista challenge can reach a wide
demographic, Taft said, such as crafters, people who want to recycle
clothing and normal thrifters.
[article from The Buffalo News, June 7, 2015];14

After a tough winter, Goodwill looks to spring …
Jamie Nix of Tabernacle is a ‘thrifter’ who was combing through shirts
Tuesday.
[article from The Philadelphia Inquirer, March 5, 2014];15

But expert thrifters know that the epic Goodwill Store down the street …
is the place where to haul in big bags of gently used goods.
[article from The Boston Globe, February 16, 2014];16 and

Frugal fashion: Secondhand shops thrive in recession …
Both women are committed thrifters, a category of shoppers who buy most
of their casual and workday wardrobes from ‘gently used’ clothing stores.
… Thrift-store shopping is also a way to sidestep so-called ‘fast fashion,’ …
[article from Sacramento Bee, July 28, 2013].17

12 Submitted with Office action issued on June 19, 2015.
13 Id.
14 Id.
15 Id.
16 Id.
17 Id.
Serial No. 86418459
10

The Examining Attorney also submitted printouts from several different third-
party retail websites featuring thrift store services. Excerpts from the printouts
include:
Gone-Tomorrow
An Online Thrift Store
Welcome to Gone-Tomorrow – An Online Thrift Store
[www.gone-tomorrow.com];18

The Attic
Welcome to our Online Thrift Store
Where you can shop vintage clothes, used designer clothes, & retro clothes
that are stylish & affordable …
The Attic is the most stylish thrift store you’ve ever seen!
[www.atticclothes.com];19 and

WebThriftStore
We turn excess stuff into cash for charities …
[retail website offering used items for sale, www.webthriftstore.com].20

In addition, the Examining Attorney submitted copies of online articles about
“social shopping” websites. Relevant excerpts include:
10 Best Social Shopping Sites Right Now
Social shopping sites integrate social aspects, such as product sharing and
front-facing user engagement. … Social shopping fills a fundamental desire
for social interaction and decision reassurance, and helps mitigate the
isolation inherent to most online activities.
[online article from PC Magazine, November 26, 2014,
www.pcmagazine.com];21 and

7 Essential Social Shopping Websites
Want to get involved in social shopping but don’t know where to start?
These 7 essential social shopping websites will get you started whether you
are interested in window-shopping on the web, getting product reviews,

18 Submitted with Office action issued on January 30, 2015.
19 Id.
20 Submitted with Office action issued on June 19, 2015.
21 Submitted with Office action issued on January 30, 2015.
Serial No. 86418459
11

getting involved in a shopping community, keeping up with the latest
fashion trends, or mainly focused on designer fashions. … these social
shopping websites will hook you into a community to help guide your web
shopping.
[article from website offering list of seven “social shopping” websites,
www.webtrends.about.com].22

Analysis
Based on the record before us, we find the proposed mark THRIFTER is merely
descriptive of both Applicant’s “on-line retail store services featuring a wide variety
of consumer goods of others” and its “on-line social networking services.” The
proposed mark merely describes the intended consumer or user of Applicant's
services. There is ample evidence showing that “thrifter” describes a shopper who
avidly frequents thrift stores. The record also establishes the existence of online retail
thrift stores and Applicant’s recitation of services is broad enough to include this type
of online store.23 Furthermore, Applicant’s online social networking services is broad
enough to include social shopping websites where shoppers, including thrifters, can
discuss various shopping techniques, their recent purchases and obtain shopping
advice.

22 Submitted with Office action issued on June 19, 2015.
23 With regard to the scope of Applicant’s services and the descriptiveness refusal, we note
the following information requests are particularly relevant:
1. Explain the term THRIFTER in the context of the identified services
2. Can the term THRIFTER be defined as a person who shops at thrift stores?
3. Will applicant sell previously owned goods in the online retail store?
4. Will applicant’s social networking services be related to shopping?
If Applicant had information establishing that the proposed mark is not descriptive, it
could have provided it in response, but failed to do so.
Serial No. 86418459
12

The Board has long held that a term is merely descriptive if describes the intended
user or consumer of the relevant services. See In re Planalytics, Inc., 70 USPQ2d
1453, 1456 (TTAB 2004) (with respect to the mark GASBUYERS for “providing on-
line risk management services in the field of pricing and purchasing decisions for
natural gas,” the Board held that “Applicant's identification of services makes it clear
that its services are directed to those who are in the field of making purchasing
decisions for natural gas. The evidence supports the conclusion that these people
would be referred to as gas buyers.”). See also Hunter Publ'g Co. v. Caulfield Publ'g
Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a
trade journal directed toward users of large data processing systems; evidence
sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222
USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail
mail-order services in the field of outdoor equipment and apparel). The term
THRIFTER falls in line these decisions as it merely describes a particular type of
person who would be interested in shopping via an online thrift store or partaking in
online social shopping network services.
We disagree with Applicant’s assertion that consumers, upon viewing THRIFTER
in the context of the recited services, would “need to undertake … imaginative steps
to arrive at a tolerably accurate or direct description of the product or service from
the mark itself.”24 Again, the recitation of services is broad enough to include online
thrift store services as well as social shopping websites and, with those particular

24 4 TTABVUE 13.
Serial No. 86418459
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services in mind, it would take little imagination to understand that THRIFTER
describes the target audience for these services.
Applicant’s argument that competitors do not need to use the term “thrifter” is
belied by the record showing the term used to describe a type of consumer to whom
Applicant, and its competitors, will need to advertise their services. In other words,
should other owners of online thrift stores or social shopping network websites direct
their marketing efforts to avid thrift store shoppers, they may need and are entitled
to use the term “thrifter.” Applicant characterizes some of this evidence as
“unauthorized use and potentially infringing,” but by definition use of a descriptive
term need not be authorized and is not infringing. In fact, the Examining Attorney’s
evidence reveals widespread third-party non-trademark use of the term “thrifter.”
Decision: The examining attorney's requirement for information pursuant to
Trademark Act § 2.61(b) is affirmed. The refusal to register pursuant to Trademark
Act § 2(e)(1) is likewise affirmed.