This Opinion is Not a
`Precedent of the TTAB
`
`Mailed: June 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Belnick, Inc.
`_____
`
`Serial Nos. 85973023; 85973044; 85973069; and 85973100
`_____
`
`
`
`
`
`
`
`
`Walter A. Rodgers of Rodgers & Rodgers,
`for Belnick, Inc.
`Timothy Finnegan, Trademark Examining Attorney, Law Office 104,
`Chris Doninger, Managing Attorney.
`_____
`
`
`Before Quinn, Bergsman and Goodman,
`Administrative Trademark Judges.
`
`
`Opinion by Quinn, Administrative Trademark Judge:
`Belnick, Inc. (“Applicant”) seeks registration on the Principal Register of the
`
`designations SCHOOLFURNITURE4LESS,1 CHURCHCHAIRS4LESS,2
`
`
`
`
`
`
`1 Application Serial No. 85973023, filed June 28, 2013 under Section 1(a) of the Trademark
`Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on April 19,
`2010.
`2 Application Serial No. 85973044, filed June 28, 2013 under Section 1(a) of the Trademark
`Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on April 19,
`2010.
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`STACKCHAIRS4LESS,3 and FOLDINGCHAIRS4LESS,4
`
`(all
`
`in
`
`standard
`
`characters), all for “on-line retail store services featuring furniture” in International
`
`Class 35.
`
`The Trademark Examining Attorney refused registration in each application
`
`under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053,
`
`and 1127, on the ground that Applicant’s designation “is merely informational and
`
`constitutes a common term or slogan that is commonly used by those in Applicant’s
`
`particular trade or industry” and that “it does not function as a service mark to
`
`indicate the source of Applicant’s services and to identify and distinguish them from
`
`others.” (Brief, 6 TTABVUE 3).5
`
`When the refusal was made final in each application, Applicant appealed.
`
`Applicant and the Examining Attorney filed briefs.
`
`The appeals involve common issues of law and fact, and there is certain
`
`overlapping evidence in the application files. Accordingly, we will decide the appeals
`
`in this single opinion. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009);
`
`TBMP § 1214 (2014).
`
`
`
`3 Application Serial No. 85973069, filed June 28, 2013 under Section 1(a) of the Trademark
`Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on April 29,
`2010. We note the discrepancy in the first use dates between this application and the other
`three, but have no way of knowing whether the discrepancy is intentional or a
`typographical error.
`4 Application Serial No. 85973100, filed June 28, 2013 under Section 1(a) of the Trademark
`Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on April 19,
`2010.
`5 Citations to the briefs in this opinion refer to the TTABVUE docket entry number, and the
`electronic page number where the argument appears. TTABVUE is the Board’s electronic
`docketing system.
`
`
`
`2
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`The Arguments
`
`The Examining Attorney maintains in each application that Applicant’s
`
`designation is commonly used in the furniture industry by retailers to indicate that
`
`they offer furniture for sale that is inexpensive; thus, according to the Examining
`
`Attorney, customers will perceive each of Applicant’s “—4LESS” designations as a
`
`common informational phrase and not a source indicator. In support of each refusal
`
`the Examining Attorney introduced excerpts of numerous third-party websites
`
`showing furniture retailers using similar designations.
`
`Applicant argues that “the threshold of distinctiveness necessary for a mark to
`
`qualify as a trademark is quite low” and that “[i]nclusion of ‘4 LESS’ in applicant’s
`
`mark is believed to present a visual variation from the generic term ‘FOR LESS’ in
`
`that it is capable, at least at some time in the future, to function as a service mark.”
`
`(Brief, 4 TTABVUE 3).6 Applicant also relies on the existence of third-party
`
`registrations of marks that include the terminology “4 LESS” or “FOR LESS,”
`
`including some comprising this terminology coupled with a beginning generic term.
`
`
`
`
`
`
`6 Applicant’s contention that each of its designations “is capable, at least at some time in
`the future, to function as a service mark” is one more appropriate for arguing registrability
`on the Supplemental Register. Applicant is reminded that it is seeking to register its
`designations on the Principal Register, which is reserved for marks that are inherently
`distinctive or that have acquired distinctiveness. In any event, given the nature of the
`refusal and the Examining Attorney’s arguments relating thereto, it is clear that the
`Examining Attorney would not allow registration on the Supplemental Register either. In
`this connection it should be noted that an applicant cannot overcome a refusal of
`registration issued on the ground that the matter is merely informational by attempting to
`amend the application to seek registration on the Supplemental Register or pursuant to
`Section 2(f). See In re Eagle Crest, 96 USPQ2d 1227, 1229 (TTAB 2010).
`3
`
`
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`
`The specimen for each application is reproduced below.
`
`
`
`
`
`
`
`In each instance, Applicant claims that it sells furniture at the lowest prices.
`The Law
`
`To function as a service mark, a designation must be used in a manner that
`
`would be perceived by purchasers as identifying and distinguishing the source of
`
`the services recited in the application. See generally TMEP §1301.02(a) (2015). Use
`
`of a designation or slogan to convey advertising or promotional information, rather
`
`
`
`4
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`than to identify and indicate the source of the services, is not service mark use. See
`
`In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960) (GUARANTEED
`
`STARTING found to be ordinary words that convey information about the services,
`
`not a service mark for the services of “winterizing” motor vehicles); In re Melville
`
`Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS found to be
`
`informational phrase that does not function as a mark for retail store services); In re
`
`Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A
`
`MONTH OR MORE so highly descriptive and informational in nature that
`
`purchasers would be unlikely to perceive it as an indicator of the source of hotel
`
`services); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE
`
`found to be a common commercial phrase that does not serve to identify grocery
`
`store services); In re Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983) (IN ONE
`
`DAY not used as source identifier but merely as a component of advertising matter
`
`that conveyed a characteristic of applicant’s plastic surgery services); In re
`
`European-American Bank & Trust Co., 201 USPQ 788 (TTAB 1979) (slogan THINK
`
`ABOUT IT found to be an informational or instructional phrase that would not be
`
`perceived as a mark for banking services); In re Restonic Corp., 189 USPQ 248
`
`(TTAB 1975) (phrase NICE TO GET HOME TO used merely to advertise goods
`
`manufactured and sold by applicant’s franchisees does not serve to identify
`
`franchising services).
`
`Slogans and other terms that are merely informational in nature, or common
`
`laudatory phrases or statements that would ordinarily be used in business or in the
`
`
`
`5
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`particular trade or industry, are not registrable. See In re AOP LLC, 107 USPQ2d
`
`1644, 1655 (TTAB 2013) (finding AOP merely informational and not source-
`
`identifying for wine as it informs consumers of a certification process); In re T.S.
`
`Designs, Inc., 95 USPQ2d 1669 (TTAB 2010) (holding CLOTHING FACTS merely
`
`an informational phrase and not a source identifier based on the likely consumer
`
`perception of the phrase used on a clothing label in connection with manufacturing
`
`information reminiscent of the “Nutrition Facts” label required for food products by
`
`the United States Food and Drug Administration); In re Aerospace Optics, Inc., 78
`
`USPQ2d 1861 (TTAB 2006) (holding SPECTRUM fails to function as a mark for
`
`illuminated pushbutton switches, where the mark is used in a manner that merely
`
`informs potential purchasers of the multiple color feature of the goods, and the
`
`coloring and font in which the mark is displayed are not sufficient to imbue the
`
`term with source-identifying significance or to set it apart from other informational
`
`wording); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998) (holding
`
`DRIVE SAFELY merely an informational phrase or slogan that would be perceived
`
`as an everyday, commonplace safety admonition that does not function as mark); In
`
`re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (holding THINK GREEN and
`
`design for weather stripping and paper products “merely an informational slogan
`
`devoid of trademark significance”); In re Remington Prods., Inc., 3 USPQ2d 1714
`
`(TTAB 1987) (holding PROUDLY MADE IN USA, for electric shavers, merely an
`
`informational slogan that is incapable of functioning as a mark, notwithstanding
`
`use of letters “TM” in connection with prominent display of slogan on packages for
`
`
`
`6
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`the goods and claim of acquired distinctiveness); In re Tilcon Warren, Inc., 221
`
`USPQ 86 (TTAB 1984) (holding WATCH THAT CHILD for construction material
`
`merely informational and not registrable notwithstanding long use); In re
`
`Schwauss, 217 USPQ 361, 362 (TTAB 1983) (finding FRAGILE for labels and
`
`bumper stickers merely informational and devoid of any source-identifying
`
`function). See also TMEP §1202.04.
`
`The critical inquiry in determining whether a slogan or term functions as a
`
`trademark or service mark is how the proposed mark would be perceived by the
`
`relevant public. In re Eagle Crest, Inc. 96 USPQ2d at 1229-30 (holding ONCE A
`
`MARINE, ALWAYS A MARINE to be an “old and familiar Marine expression…that
`
`should remain free for all to use”); see In re Phoseon Technology Inc., 103 USPQ2d
`
`1822, 1827 (TTAB 2012) (noting the critical inquiry in determining whether a mark,
`
`as used on the specimen, functions as a trademark is the “commercial impression it
`
`makes on the relevant public (e.g., whether the term sought to be registered would
`
`be perceived as a mark identifying the source of the goods or merely as an
`
`informational phrase).”). The more commonly a phrase is used in everyday parlance,
`
`the less likely the public will use it to identify only one source and the less likely the
`
`phrase will be recognized by purchasers as a trademark or service mark. In re Eagle
`
`Crest, 96 USPQ2d at 1229-30 (noting that “‘[a]s a matter of competitive policy, it
`
`should be close to impossible for one competitor to achieve exclusive rights’ in
`
`common phrases or slogans.” (quoting J. Thomas McCarthy, McCarthy on
`
`Trademarks and Unfair Competition, §7.23 (4th ed. 2010))). Because the function of
`
`
`
`7
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`a trademark or a service mark is to identify a single commercial source for
`
`particular goods or services, if consumers are accustomed to seeing a slogan used in
`
`connection with goods/services from many different sources, it is likely that
`
`consumers would not view the slogan as a source identifier for such goods/services.
`
`Id. at 1230.
`
`As indicated earlier, an applicant cannot overcome a refusal of trademark
`
`registration issued on the ground that the matter is merely informational by
`
`attempting to amend the application to seek registration on the Supplemental
`
`Register or pursuant to Section 2(f). See In re Eagle Crest, 96 USPQ2d at 1229-30
`
`(noting that “[s]logans and other terms that are considered to be merely
`
`informational in nature, or to be common laudatory phrases or statements that
`
`would ordinarily be used in business or in the particular trade or industry, are not
`
`registrable”). In support of the refusal, the Examining Attorney must provide
`
`evidence that the mark is a slogan or term incapable of being perceived as a
`
`trademark or service mark. This support may include evidence of decorative or
`
`informational use by other manufacturers on goods or services of a similar nature
`
`and evidence that the term or slogan is frequently used by parties in connection
`
`with the sale of their goods or services. See id. at 1230 (noting because consumers
`
`would be accustomed to seeing the phrase ONCE A MARINE, ALWAYS A MARINE
`
`“displayed on clothing items from many different sources, they could not view the
`
`slogan as a trademark indicating source of the clothing only in applicant”); In re
`
`Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (finding the relatively common
`
`
`
`8
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`merchandising slogan WHY PAY MORE! does not function as a mark which
`
`identifies and distinguishes applicant’s services from others).
`
`The Board in the past considered a mark very similar to the one at issue herein.
`
`In the case of In re Melville Corp., supra, the Examining Attorney refused
`
`registration, in pertinent part, on the ground that the designation BRAND NAMES
`
`FOR LESS, when used in connection with “retail store services in the clothing
`
`field,” did not function as a mark to identify and distinguish applicant’s services and
`
`was therefore unregistrable. The Board agreed, finding that the phrase would not
`
`be viewed by consumers as a service mark but rather as a merchandising slogan
`
`using common ordinary words merely to convey information about applicant’s
`
`services. In making this determination, the Board relied upon third-party uses such
`
`as “Brand name furniture at low low discount prices,” and “QUALITY BRAND
`
`CLOTHING AT LOW DISCOUNT PRICES,” stating that the examples “show that
`
`it is a relatively common practice in the retail industry to make the claim that a
`
`merchant sells brand name merchandise for less than the usual price.” Id. The
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`Board observed that in an environment where consumers are accustomed to the use
`
`by merchants of similar information phrases, the fact that the applicant conveyed
`
`similar information in a slightly different way than others was not determinative.
`The Evidence
`
` As indicated above, there is overlapping evidence in the four appeals. The
`
`Examining Attorney introduced evidence in each application bearing on third-party
`
`usage of the terminology “—4 Less” and “—For Less” in the retail furniture trade.
`
`
`
`9
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`(Office actions dated 11/3/2013, 3/16/2014, 5/11/2014 in Ser. No. 85973023; Office
`
`actions dated 11/3/2013 and 5/26/2014 in Ser. No. 85973044; Office actions dated
`
`11/3/2013 and 5/26/2014 in Ser. Nos. 85973069 and 85973100).7 A representative
`
`sample includes the following uses:
`
`Furniture 4 Less
`<furniture4lessmiami.com>
`
`Great Furniture 4 Less
`<gf4l.com>
`
`Offering the best reception furniture at the lowest price
`with the fastest shipping is what you can expect from
`ReceptionFurniture4Less!
`<receptionfurniture4less.com>
`
`Modern Furniture 4 Less
`<modernfurniture4less.com>
`
`Furniture For Less
`<siouxcityjournal.com>
`
`Furniture 4 A Lot Less
`<furniture4.com>
`
`Furniture For Less
`<furnitureforlessfargo.com>
`
`Your Furniture 4 Less
`Brand New Brand Name Furniture at Everyday Low
`Prices
`<yourfurniture4less.com>
`
`Furniture & Mattresses 4 Less
`Furniture and Mattresses for Less…A LOT LESS!
`<furnitureandmattress4less.com>
`
`
`
`
`
`
`
`7 To the extent that certain evidence is different in the applications, it is cumulative in
`nature.
`
`
`
`10
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`
`Furniture 4 Less
`The True Half Price Store
`<furniture-4-less.net>
`
`Restaurant Furniture 4 Less
`<restaurantfurniture4less.com>
`
`EZ Home Furnishing For Less
`Elegant Furnishing For Less
`<ezhomefurnishing4less.com>
`
`Family Furniture 4 Less
`<flikr.com>
`
`Bean Bag Chairs for Less
`<bedderrest.com>
`
`Furniture 4 Less
`At Furniture 4 Less, you can furnish every room in your
`home without paying a lot of money.
`<furniture4less.com>
`
`Mattress & Furniture For Less
`<furnitureandmattressforless.com>
`
`Mid Century Furniture 4 Less
`<midcenturyfurniture4less.com>
`
`Premium Furniture For Less
`<city-data.com>
`
`Applicant, for its part, introduced the same third-party registration evidence in
`
`each application. More specifically, Applicant states that the Office previously
`
`registered 102 marks incorporating the terminology “4 LESS” or “FOR LESS.” In
`
`this connection Applicant furnished copies of 23 third-party registrations of marks
`
`for services in Class 35. Each mark includes the terminology “4 LESS” or “FOR
`
`LESS” generally following highly descriptive or generic terminology. Applicant
`
`contends that the state of the register is an indication that Applicant’s proposed
`
`
`
`11
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`marks, which are similar to certain registered marks, are capable of functioning as
`
`service marks.
`
` The Examining Attorney also introduced evidence bearing on the specific generic
`
`term in each of Applicant’s designations sought to be registered. Given that the
`
`present refusal pertains to each designation as a whole, and the critical issue
`
`centers on the use of similar designations in the industry, we see no reason to focus
`
`attention on the genericness of the beginning term in each of Applicant’s
`
`designations. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., ___F.3d___,
`
`No. 14-1517, 2015 WL 2337417 (Fed. Cir. May 15, 2015), citing H. Marvin Ginn
`
`Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ2d 528, 530 (Fed.
`
`Cir. 1986) (The test for genericness is a two-step inquiry: first, determine the genus
`
`of goods or services at issue; and second, determine whether the mark in question is
`
`understood by the relevant public primarily to refer to that genus of goods or
`
`services). Suffice it to say that the evidence in each case clearly establishes that the
`
`beginning term in each designation is the name of a type or category of furniture,
`
`and that purchasers clearly would use or understand each of the terms “school
`
`furniture,” “church chairs,” “stack chairs,” and “folding chairs” as the name of a type
`
`or category of furniture. Applicant does not dispute this point.
`The Analysis
`
`Each of Applicant’s designations comprises a generic term followed by the
`
`designation “4 LESS.” The lack of spaces between the components of each
`
`designation, and the use of the number “4” rather than the word “FOR” in each of
`
`
`
`12
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`the designations, either individually or collectively, do not transform each
`
`informational designation into a distinctive mark. The record shows pervasive use
`
`in the furniture trade of designations that are very similar to Applicant’s
`
`designations; the designations “4 Less” and “For Less” have been shown to be used
`
`interchangeably, and we consider them to be generic equivalents indicating
`
`discount pricing.8 We find that the Examining Attorney’s evidence shows that it is a
`
`common practice in the retail furniture industry for a retailer to claim, through use
`
`of “—4 Less” and “—For Less” slogans, that it sells furniture for less than the usual
`
`price. Given this pervasive use by many different sources, consumers are
`
`accustomed to seeing designations comprising the name of a specific type of
`
`furniture followed by “4 Less” or “For Less,” and they likely will not view such
`
`designations as source indicators. Accordingly, consumers will perceive each of
`
`Applicant’s designations as merchandising slogans to convey information about
`
`Applicant’s on-line retail store services featuring furniture; namely, that Applicant
`
`offers lower furniture prices than its competitors. See In re Eagle Crest, 96 USPQ2d
`
`at 1229-30; In re Melville, 228 USPQ at 971-72; In re Wakefern Food Corp., 222
`
`USPQ at 78-9.
`
`With respect to Applicant’s “State of the Register” argument, we initially point
`
`out that, in certain registrations, the terminology “4 LESS” or “FOR LESS” (or the
`
`entire literary component in a composite mark, e.g., “TIRES 4 LESS” and “SEW 4
`
`LESS”) is disclaimed. (See, e.g., Reg. Nos. 2805689; 3723429; 3907178; 3952222;
`
`3999130; and others). These marks contain other distinctive elements, whether
`
`8 As indicated earlier, Applicant concedes that “For Less” is generic. (Brief, 4 TTABVUE 3).
`13
`
`
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`additional wording or designs, which serve to distinguish the registrability of those
`
`marks as compared to Applicant’s designations, which are depicted simply in
`
`standard characters. Other marks are registered on the Supplemental Register.
`
`(See, e.g., Reg. No. 4348281 for the mark CAR LIGHTS 4 LESS). In any event, given
`
`the prevalent third-party usage of the terminology “4 Less” and “For Less” in the
`
`furniture trade, we see no reason to focus on how the Office has treated (perhaps, at
`
`times, somewhat
`
`inconsistently) this terminology
`
`in the past. Although
`
`administrative consistency is a goal, these third-party registrations are not
`
`conclusive on the question of registrability of Applicant’s designation inasmuch as
`
`each case must stand on its own merits. See In re Nett Designs Inc., 236 F.3d 1339,
`
`57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
`
`characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
`
`registrations does not bind the board or this court.”); In re theDot Commc’ns
`
`Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011).
`
`We find the present cases to be very similar to the Melville decision. Just as with
`
`the slogan “Brand Names For Less” which was denied registration in that case,
`
`each of Applicant’s designations should remain available for others to use in
`
`connection with their competing services. Indeed, the record shows common usage
`
`of the designation “—4 Less” and “—For Less” in the furniture trade. Further, we
`
`are not persuaded by Applicant’s reliance on the case of In re School Book Fairs,
`
`Inc., 229 USPQ 556 (TTAB 1986) for the reasons expressed by the Examining
`
`Attorney. The mark in School Book Fairs was stylized and included interlocking
`
`
`
`14
`
`

`
`Application Serial Nos. 85973023; 85973044; 85973069; and 85973100
`
`letters “OO”; the Board found that the design elements possessed a sufficient
`
`modicum of variation from the ordinary to demonstrate modest potential for
`
`distinctiveness and distinguishability needed to qualify for registration on the
`
`Supplemental Register. That situation is contrasted with the current applications
`
`seeking registration on the Principal Register, wherein Applicant’s designations are
`
`depicted in standard characters, with no stylization or design elements.
`
`We conclude that, in a marketplace environment where consumers are
`
`accustomed to the use by merchants of similar “—4 Less” and “—For Less”
`
`informational phrases, consumers are not likely to view Applicant’s designations as
`
`service marks but rather as merchandising slogans using common ordinary words
`
`or terminology to convey information about Applicant’s services, namely that
`
`Applicant offers lower furniture prices than its competitors.
`
`
`
`Decision: The refusal to register the proposed mark on the Principal Register in
`
`each application is affirmed.
`
`
`
`15