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`IQVPUBLICATION/REGISTRATIC
`7573287.:
`Date _“I _l 6}
`L.O.
`_7 Serial No.
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have ’beendcoded_ I
`' Leallnstrument Examiner LIE
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`Mark Data
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`Foreign Reg. Data
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`OwnerData . '
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`First Use Date
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`In Another Form
`lb
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`Word Mark
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`Mark Drawing Code
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`Scan Sub Drawing
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`Mark Description
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`Lining/Stippling
`Translation
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`Section 2(0 Entire Mark
`Section 2(f) Limitation Statement
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`Amended Register
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`Foreign Country
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`Foreign Application Number
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`Foreign Registration Number
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`Foreign Registration Expiration Date
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`Foreign Reg. Renewal Expiration Date
`Owner Name
`Address 1
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`El
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`El
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`Cl
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`DCIDDEJDD
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`City
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`Zip Code
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`_
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`Citizenship
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`Entity Statement
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`Assignment(s)/Name Change
`Concurrent Use
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`Amd/Co rr Restr.
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`Prior U.S. Reg. —
`C]
`Correspondence _ _
`_ U
`- U
`Correspondence Finn Name/Address
`I certify that all corrections have been entered-in aec
`Ce
`'th text e ting guidelines.
`-
`‘ 3
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`Cl
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`Prior Registration
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`Attorney
`Attorney ‘Docket Number
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`"
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`Other:
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`‘
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`LEE
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`.3
`Data Element
`- Goods and Sewiees
`First Use in Commerce D
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`_
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`Certification
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`Pseudo Mark
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`Design Search Code
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`Disclaimer
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`Name/Portrait/Consent
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`Section 2(t) in Part
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`Amended Register Date
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`44(d)
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`Cl
`El
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`Cl
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`E]
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`El
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`E]
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`El
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`Cl
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`El
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`Foreign Application Filing
`El Foreign Registration Date
`El
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`Foreign Renewal Reg. Nui
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`El
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`Cl
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`Cl
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`Foreign Renewal Reg. Dat
`DBA/AKA/TA
`Address 2
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`Cl 3 Cate
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`I
`Entity
`Composed of
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`Domestic Representative
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`

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`IS
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`was sssmsanion
`AS
`OF THE T.T.A.B.
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`‘
`
`2 7 -‘UN 2002
`Paper No ,
`1 1
`Ew1-1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`In re George R. Melby
`
`Serial No. 75/932,890
`
`Jonathon Grad for George R. Melby.
`
`David H. Stine, Trademark Examining Attorney, Law Office
`114 (Margaret Le, Managing Attorney).
`
`Before Hanak, Quinn and Hohein, Administrative Trademark
`Judges.
`
`Opinion by Hanak, Administrative Trademark Judge:
`
`George R. Melby (applicant) seeks to register THE 4TH
`
`SHELL in typed drawing form for “accessories for shotguns,
`
`namely externally—mounted auxiliary shell holders.”
`
`The
`
`application was filed on December 4, 2000 with a claimed
`
`first use date of August 6, 1999.
`
`Citing Section 2(e)(1) of the Trademark Act,
`
`the
`
`Examining Attorney has refused registration on the basis
`
`that applicant's mark is merely descriptive of applicant's
`
`goods.
`
`

`
`Serial No. 75/932,890
`
`When the refusal to register was made final, applicant
`
`appealed to this Board. Applicant and the Examining
`
`Attorney filed briefs. Applicant did not request an oral
`
`hearing.
`
`As has been stated repeatedly, “a term is merely
`
`descriptive if it forthwith conveys an immediate idea of
`
`the ingredients, qualities or characteristics of the
`
`goods.”
`
`n re Abcor Development Corp., 588 F.2d 811, 200
`
`USPQ 215, 218 (CCPA 1978)
`
`(emphasis added). Moreover,
`
`the
`
`immediate idea must be conveyed forthwith with a “degree of
`
`particularity.” In re TMS Corp. of the Americas, 200 USPQ
`
`57, 59 (TTAB 1978);
`
`In re Entenmann's Inc., 15 USPQ 57, 751
`
`(TTAB 1990), §§§;g 90-1495 (Fed. Cir. February 13, 1991).
`
`At the outset, we note that the Examining Attorney has
`
`the burden of establishing that applicant's mark is merely
`
`descriptive of its goods.
`
`In this case,
`
`the Examining
`
`Attorney has made of record absolutely no evidence showing
`
`that applicant's mark is merely descriptive of applicant's
`
`goods.
`
`In the first Office Action,
`
`the Examining Attorney
`
`tentatively argued that “it appears that [applicant's]
`
`goods are, literally, holders for a 4“ shell.” In his
`
`brief at page 2,
`
`the Examining Attorney took on a more
`
`

`
`Serial No. 75/932,890
`
`adamant tone stating that applicant's “goods are, without
`
`dispute, an external holder for a 4“‘shell for use in
`
`connection with shotguns otherwise having a three—shell
`
`magazine.” However,
`
`in his brief the Examining Attorney
`
`never addressed the following argument set forth by
`
`applicant at pages 4 and 5 of his brief:
`
`thought, perception and
`“In the instant case,
`imagination would be required to reach a
`conclusion, based on the mark, as to the nature
`of the goods. Upon hearing the mark, one would first
`question what exactly a fourth shell is W Next, one
`would have to pause to consider why the term ‘4m’
`is
`present in the mark.
`The shot that is held by the
`shell holder [applicant's goods] may be a first shell,
`a second shell, a third shell, a fourth shell or even
`a fifth shell, depending on how many shells have been
`loaded into the shotgun, how many shells have already
`been fired, and how many shells are being held by the
`shell holder.”
`
`We find that based on this particular record where the
`
`Examining Attorney has introduced absolutely no evidence,
`
`that applicant's mark is simply suggestive of applicant's
`
`goods.
`
`Put quite simply,
`
`there is nothing in the record
`
`(including applicant's brochure describing his goods) which
`
`limits applicant's externally—mounted auxiliary shell
`
`holder to shotguns having a three—shell magazine. As
`
`previously noted,
`
`the Examining Attorney has never taken
`
`issue with applicant's contention that its goods could be
`
`

`
`Serial No. 75/932,890
`
`used in connection with shotguns having various shell
`
`capacities. Quite telling is the failure of the Examining
`
`Attorney to make of record newspaper or magazine articles
`
`showing that users of shotguns have expressed the desire
`
`that they have a fourth shell or fourth shot.
`
`In short,
`
`based on this record,
`
`there is nothing to indicate that
`
`among users of shotguns,
`
`the terms “fourth shell” or
`
`“fourth shot” are ever used.
`
`Decision: The refusal to register is reversed.
`
`

`
`UNWEDSTATESDEPARTMENTOFCOMMERCE
`Patent and Trademark Office
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`May 8, 2002
`
`David H. Stine
`
`Examining Attorney
`Law Office 114
`
`ROCHELLE L RI CKS
`
`Paralegal Specialist,
`Trademark Trial and Appeal Board
`
`Subject: Transmittal of Reply Brief for Application
`Serial No. 75932890
`
`Attached, solely for the information of the Trademark
`Examining Attorney,
`is a copy of the reply brief filed by
`applicant in the above—identified appeal.
`No need to
`forward back to the Board.
`
`If the Examining Attorney is persuaded by the arguments
`contained in the reply brief that applicant's mark is
`registrable, and decides to allow the application,
`the
`Administrator of the Board should be notified of the
`Examining Attorney's decision within 3 working days from the
`date hereof.
`In the absence of such notification,
`the Board
`will go forward with the appeal.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`George R Melby
`
`Trademark:
`
`THE 4TH SHELL
`
`Serial No:
`
`75/932890
`
`Attorney:
`
`Johnathan Grad
`
`Address:
`
`Vidas, Arrett & Steinkraus, P.A.
`Suite 2000
`6109 Blue Circle Drive
`
`Minnetonka, MN 5 53 43 -9185
`
`:
`
`:
`
`:
`
`:
`
`.
`
`BEFORE THE
`
`TRADEMARK TRIAL
`
`p AND
`
`APPEAL BOARD
`
`ON APPEAL
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
`
`Applicant has appealed from the Trademark Examining Attorney's final refusal, pursuant
`to Section 2(e)(1) of the Trademark Act, to register the mark "THE 4TH SHELL" on the
`
`ground that the mark is merely descriptive.
`
`FACTS
`
`Applicant has applied for registration of the mark "THE 4TH SHELL" for "Accessories for
`
`shotguns, namely externally-mounted auxiliary shell holders.
`
`Since it appeared from the
`
`record developed during prosecution that the basic purpose or use of the goods is to
`
`provide ready access to, and rapid loading of, a fourth shell into a multi-shot shotgun, final
`
`refiisal of registration was issued on January 26, 2001, pursuant to Section 2(e)(1) of the
`Trademark Act.
`
`Applicant has traversed the refiisal by arguing essentially that the mark does not describe
`
`the goods themselves with particularity and is, therefore, only suggestive as applied to the
`
`product.
`
`

`
`ARGUMENT
`
`I. The mark " THE 4TH SHELL " is merely descriptive as applied to the goods,
`which - provide ready access to, and rapid loading of, a fourth shell into a multi-shot
`shotgun.
`
`A mark is merely descriptive under Trademark Act Section 2(e)(l), 15 U.S.C. 1052(e)(1),
`
`if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the
`
`relevant goods.
`
`In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);
`
`In re
`
`Bed &Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath
`
`Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd, 204 USPQ 591 (TTAB 1979);
`
`TMEP section 1209.01(b).
`
`In this regard, if is respectfiilly noted that Ex parte Heatube
`
`Corporation, 109 USPQ 423 (CCPA), cited by applicant for a diiferent standard, has not
`
`been the applicable precedent before the TTAB in quite some time.
`
`Moreover, contrary to applicant’s apparent position, the question of whether a mark is
`
`merely descriptive must be determined in relation to the identified goods, not in the
`
`abstract. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987);
`
`In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re
`
`Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
`
`Within the relevant context, it is respectfully submitted that the term "THE 4TH SHELL"
`
`aptly describes the purpose and use of the applicant’s goods, using only the common
`
`meaning of the words. The goods are, without dispute, an external holder for a 4"‘ shell
`
`for use in connection with shotguns otherwise having a 3-shell magazine. The purpose of
`
`applicant’s goods is, obviously, to provide easily-accessed storage for this 4“‘ shell and to
`
`permit
`
`its rapid loading. Attention is directed to the specimens of record and to
`
`app1icant’s own explanatory comments. Obviously, the terminology 4"‘ shell would be
`
`generally useful to anyone marketing a similar product.
`
`The fact that an applicant may be the first and only user of a merely descriptive or generic
`
`designation does not justify registration if the term is merely descriptive. In re National
`
`Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
`
`

`
`H. Applicant's arguments in support of registrability are ungersuasive.
`
`Applicant has argued that the mark should be considered only suggestive as applied to the
`goods since the term "THE 4TH SHELL" does not specifically identify the goods as an
`
`external shell holder. This argument is unpersuasive. It is not necessary that a term be the
`
`generic name of a product or that it describe all of the purposes, functions, characteristics
`
`or features of the goods to be merely descriptive.
`
`It is enough if the term describes one
`
`attribute of the goods.
`
`In re H. U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
`
`MBAssociates, 180 USPQ 338 (TTAB 1973).
`
`In regard to its argument that the proposed mark is not needed by competitors, nor
`
`currently used by them, it is noted that applicant has submitted, for the first time with the
`
`appeal brief, a, packet of additional evidence (designated by applicant as Exhibits 2, 3 and
`
`4). This evidence is clearly untimely and neither the evidence material, nor any arguments
`
`See: 37 CFR. Section
`based specifically thereon, have been considered in any way.
`2.142(d); In re Smith and Mehafiey, 31 USPQ 2d l53l, 1532 (TTAB 1994). As noted
`previously, however, even if applicant is the only current user of the designation THE 4TH
`
`SHELL, this does not justify registration if the term is merely descriptive. In re National
`
`Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
`
`CONCLUSION
`
`For the foregoing reasons,
`it is respectfiilly urged that the refiisal to register the mark
`"THE 4TH SHELL" on the ground that, as applied to applicant's goods, the term is merely
`
`descriptive thereof under Section 2(e)(1) of the Trademark Act, is proper and should be
`aflirmed.
`
`Respectfiilly submitted,
`
`Egtine
`
`Trademark Attorney
`Law Office 114 (703)308-9114x154
`
`Margaret Le
`Managing Attorney
`
`

`
`Véenm NO.
`?EfWI""?U Neiby,
`
`APPLICANT
`fi&or9a H
`
`MARK
`
`THE dTH EHELL
`
`__
`ADDRESS
`K
`JflNfiTHéN fififlfi
`UIDQS, QRRETT 1 RTIENHRQUS, W.fi.
`$1D9 ELUE $IRCLE
`SUETE Eflfl
`MINMETQNHQ3 MN Efifldflwfifibr
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`ACTIOQI N I
`13:1
`
`FORM PTO-1525 (5-90)
`
`U.S. DEPT. OF COMM. & TM OFFICE
`
`

`
`$7
`
`UNWEDSTATESDEPARTMENTOFCOMMERCE
`Patent and Trademark Office
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Mailed: February 5, 2002
`
`In re Melby, George R
`
`Serial No. 75932890
`
`Filed: 03/01/2000
`
`JONATHAN GRAD
`VIDAS, ARRETT & STEINKRAUS, P.A.
`6109 BLUE CIRCLE DRIVE, SUITE 200
`MINNETONKA, MN 55343—9l85
`
`Rochelle Ricks, Paralegal
`
`'Applicant's brief filed August 27, 2001 (which has just.
`
`been associated with the file of record)
`
`is noted and the
`
`application file is forwarded herewith to the Trademark
`
`Examining Attorney for his brief in accordance with
`
`Trademark Rule 2.l42(b).
`
`A request for an oral hearing, if desired,
`
`is due not
`
`later than ten days after the due date for applicant's reply
`
`brief.
`
`

`
`TRADEMARK
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Application of:
`
`George R. Melby
`
`Serial No.:
`
`Filed:
`
`Mark:
`
`Examiner:
`
`Law Office :
`
`75/932,890
`
`March 1, 2000
`
`‘
`
`THE 4TH SHELL
`
`David H. Stine
`
`114
`
`Box TTAB
`Assistant Commissioner of Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`(1)
`
`Introduction
`
`V
`
`BRIEF ON APPEAL.
`
`913IHVIENVFZU
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`
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`mv:=
`
`Docket No: M63.4-9314
`
`||||||l|||||||l||l|||||||l||||||||||l||1|||||||||| T
`
`08-27-2001
`U.S. Prmnt G. TMOtcITM Mail Fkzpt Elt. m
`
`This is a Brief on Appeal for the above-identified application in which the
`
`trademark Examining Attorney refused to register the trademark "THE 4TH SHELL" on the
`
`grounds that it is merely descriptive within the meaning of §2(e)(1) ofthe Trademark Act, 15
`
`U.S.C. §1052(e)(1). This brief is in furtherance of the Notice of Appeal filed in this case on July
`
`20, 2001.
`
`(2)
`
`Facts
`
`On March 1, 2001, applicant George R. Melby filed an application for the mark
`
`"THE 4TH SHELL" in lntemational Class 013 for goods such as Shotguns (component parts
`
`thereof). In an Office Action mailed August 9, 2000, the Examining Attorney noted that no
`
`similar or pending mark which would bar regisflation under §2(d) of the Trademark Act, 15
`
`U.S.C. §l 052(d) was found. However, the Examining Attorney refused registration ofthe mark
`
`on the Principal Register on the grounds that the mark is merely descriptive. The identification
`
`of goods was also said to be indefinite. The Examining Attorney suggested the following
`
`identification of goods: Accessories for shotguns, namely extemally-mounted auxiliary shell
`
`holders".
`
`

`
`Serial No.: 75/035,597
`
`Page 2
`
`.
`
`Appeal Brief
`
`In an amendment mailed December 1, 2000, Applicant amended the goods
`
`description in accordance with the recommendation of the Examining Attorney.
`
`In a Final Office Action mailed January 26, 2001, the refusal of registration was
`
`made final because the mark was believed to be merely descriptive. The Examining Attorney
`asserted that the goods provide capacity for a fourth shell and as such, the mark is merely
`
`descriptive.
`
`Having filed a notice of appeal on July 20, 2001, Applicant is now appealing the
`
`refusal of registration.
`
`(3)
`
`Issue
`
`Is the mark "THE 4TH SHELL" merely descriptive and hence unregistrable on
`the Principal Register.
`
`(4)
`
`Argument
`
`THE MARK IS NOT MERELY DESCRIPTIVE
`
`I.
`
`I THE LAW AS IT RELATES TO “MERELY DESCRIPTIVE”Exparte
`
`Heatube Corporation, 109 USPQ 423 (CCPA 1956) is often cited for the test to
`
`apply in determining whether or not a mark is merely descriptive when applied to
`
`an applicant's goods. The case states that these three questions, paraphrased
`
`slightly, must be answered:
`
`1)
`
`Is the mark presented for registration used as a trademark or as the name
`
`of the goods?
`
`2)
`
`Is the immediate and only eject of the mark to describe, or does it also
`
`function as an indication of origin.
`
`Is the word, or term, in common usage in the trade or elsewhere as a
`
`description of the same or related goods.
`
`

`
`Serial No.: 75/035,597
`
`Page 3
`
`Appeal Brief
`
`In deciding whether a mark is suggestive or merely descriptive the TTAB stated:
`
`We also recognize, of course, that there is often a thin line of demarcation
`between a suggestive term and a merely descriptive term, and that the
`determination of the category into which a particular word falls is
`frequently a difficult determination. Also, any doubt with respect to the
`issue ofdescriptiveness should be resolved in applicant's behalf
`(Emphasis added). In re grand Metropolitan Foodservice Inc. , 30 USPQ
`1974, 1976 (TTAB 1994), citing In re George Weston Ltd., 228 USPQ 57
`(TTAB 1985) and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB
`1 972).
`
`"THE 4TH SHELL" IS NOT MERELY DESCRIPTIVE
`
`"THE 4TH SHELL" Is Used As A Trademark
`
`The specimens filed with the present application clearly show "THE 4TH
`
`SHELL" being used as a trademark. The term "THE 4TH SHELL" is used on the specimens to
`
`indicate the name of the product and is not used in the specimen to describe the products to
`
`which the mark corresponds. To that end, it is noted that the mark is set out in large letters and is
`
`accompanied by the symbol T“ on the packaging. Therefore, the first portion of the Heatube test
`
`should be found in applicant's favor.
`
`B.
`
`"THE 4TH SHELL" Does Not Have The Immediate And Only Effect Of
`
`Describing
`
`"THE 4TH SHELL" does not describe the goods in conjunction with which the
`
`mark is used. The mark is used in conjunction with shell holders and not in conjunction with
`
`shells. A shell, as defined in The American Heritage Dictionary (New College Edition 1976), is
`
`a projectile or piece of ammunition or a metal or cardboard case, containing the charge, primer
`
`

`
`Serial No.: 75/035,597
`Page 4
`
`Appeal Brief
`
`and shot, fired from a shotgim (see Exhibit 3). Shell holders cannot be used as shells — they are
`
`not fired from guns. Rather, they are mounted on guns and hold shells for later use.
`
`It is not necessary that a term describe all of the purposes, functions,
`characteristics or features of a product in order to be considered merely
`descriptive; it is enough if the term describes one significant function, attribute or
`property. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
`180 USPQ 338 (TTAB 1973).
`
`In the instant case, the term "THE 4TH SHELL" does not describe a function of the shell
`
`holder. The shell holder carmot act as a shell — it is not fired from a gun, it is attached to
`
`a gun. The mark also does not describe an attribute of the goods — again, the goods are
`
`hot shells but, rather, are shell holders. Finally, the mark does not describe a property of
`
`the goods. In short, the mark does not even describe a single significant fimction,
`
`attribute or property of the goods.
`
`At most, the mark may be considered by some to be suggestive. In In re
`
`George Weston Limited, 228 USPQ 57, 5 8 (TTAB 1985) the 'l'I'AB stated that a mark
`
`“would be considered suggestive if, as applied to the goods, it requires imagination,
`
`thought and perception to reach a conclusion as to the nature thereof.”
`
`In the instant case, thought, perception and imagination would be required
`
`to reach a conclusion, based on the mark, as to the nature of the goods. Upon hearing the
`
`mark, one would first question what exactly a fourth shell is. One would have to pause
`
`and recall certain regulations concerning the number of shells that may be loaded into a
`
`shotgim in certain hunting situations. Next, one would pause to consider why the term
`
`‘4"" is present in the mark. The shell that is held by the shell holder may be a first shell, a
`
`

`
`Serial No.: 75/035,597
`Page 5
`
`Appeal Brief
`
`second shell, a third shell, a fourth shell or even a fiflh shell, depending on how many
`
`shells have been loaded into the shotgun, how many shells have already been fired and
`
`how many shells are being held by the shellholder.
`
`As such, prospective customers for Applicant's product are left to
`
`speculate as to what particular properties the mark "The 4"‘ Shell" refers and a multistage
`
`reasoning process on the part of the consumer is required to reach a conclusion regarding
`
`the product. As such, the mark is at most suggestive rather than merely descriptive of
`
`applicant's goods.
`
`Therefore, the second portion of the Heatube test should be found in applicant's
`
`C.
`
`"THE 4TH SHELL" Is Not In Common Usage As A Description Of The Same Or
`Related Goods
`
`The Examining Attorney has not provided any evidence that indicates that the
`
`mark is being used by competitors as a description of their products. Moreover, the choice of the
`
`mark "THE 4TH SHELL" in no way prevents others fi'om describing similar products which
`
`function as extemally-mounted auxiliary shell holders. To that end, Applicant submits herewith
`
`several Exhibits which are directed to extemally-mounted auxiliary shell holders. Exhibit 2
`
`shows a Gunmate® Buttstock Shell Holder. Exhibit 3 is a printout of the Gunmate trademark
`
`registration (including class 13) fi'om the USPTO web page. Finally, Exhibit 4 shows an Allen
`
`Shotgun Shell Holder.
`
`

`
`Serial No..° 75/035,597
`Page 6
`
`'
`
`9
`
`Appeal Brief
`
`- Given the lack of evidence that the mark is used by competitors as a description of
`
`their products and given the objective evidence submitted herewith demonstrating that
`
`competitors are able to describe their products withoutusing the instant mark, the third portion of
`
`the Heatube test should be found in applicant's favor.
`
`Under all three parts of the Heatube test, "THE 4TH SHELL" should be found not
`
`to be merely descriptive. Additionally, In re grand Metropolitan Foodservice Inc., 30 USPQ
`
`1974, 1976 (TTAB 1994) requires that any doubt with respect to the issue of descriptiveness
`
`should be resolved in applicant's behalf as does a host of other cases including In re
`
`Morton-Norwich Produets, Inc., 209 USPQ 791 (TTAB 1981) ("where reasonable men may
`
`differ, it is the Board's practice to resolve the doubt in the applicant's favor" citing In re The
`
`Gracious Lady Service, Inc., 175 USPQ 380 (TTAB, 1972) and In re Gourmet Bakers, 173
`
`USPQ 565 (TTAB, 1972)).
`
`(5)
`
`Conclusion
`
`If Applicant's goods description were directed to a shell rather than a shell holder,
`
`descriptiveness would be conceded. And if Applicant’s mark were “The 4”" Shell Holder”
`
`descriptiveness would be conceded. However, Applicant's goods description is not directed to
`
`shells but rather to externally-mounted auxiliary shell holders and Applicant's mark is the “The
`
`4”‘ Shell”. The mark does not describe the goods to which the mark pertains. For this reason
`
`. alone, the mark is not merely descriptive.
`
`

`
`Serial No. : 75/035,597
`Page 7
`
`Appeal Brief
`
`Also, the instant mark requires a mental pause and some imagination to grasp
`
`when used in connection with the goods (extemally-mounted auxiliary shell holders), which
`
`renders this mark suggestive at most and not merely descriptive. Trademark protection may be
`
`afforded to suggestive terms. General Shoe Corp. v. Rosen, 111 F.2d 95, 98, 45 USPQ 196 (4“‘
`
`Cir. 1940).
`
`As such, the refusal to register on the basis of §2(e)(1) of the Trademark Act, 15
`
`U.S.C. §1052(e)(l) for the reason that the mark " THE 4TH SHELL " is merely descriptive
`
`should be reversed.
`
`Respectfully submitted,
`Vidas, Arrett & Steinkraus, P.A.
`Attorneys of Record
`
`Dated: August 22, 2001
`
`Vidas, Arrett & Steinkraus, P.A.
`Suite 2000
`6109 Blue Circle Drive
`
`Minnetonka, MN 55343-9185
`
`Telephone: (952) 563-3000
`Fax: (952) 563-3001
`F:\WPWork\2001\9314-BRF.DOC
`
`

`
`H93
`
`‘
`
`'
`
`sheep dog. Also sheep-dog (shEp’dog'. ~dog'). A dog trained to
`guard and herd sheep. See Old English ahoopdog.
`group-lold (shép'f6ld’) n. A pen lor sheep.
`guop-hard-or (shEp’hI‘tr’d:r) II. One who herds a large llock ol
`ghccp in open range: at shepherd. —ehoep’hocd’lng II.‘
`‘heap-lsh (shép’lsh) ad]. 1. Embarrassed. as by consciousness
`of a laull: a sheepish grin. 2. Resembling a sheep in meckness
`or stupidity. ——ahoIp‘iah-Iy adv. —shoop’ish-non rt.
`glyaop laurol. An evergreen shrub. Kulnria angtultfalia, of cast-
`an North America. having rose-pink flowers and poisonous
`foliage. Also called "lamblcill."
`;hQop's ayes. Shyly amorous glances.
`gsoop-shank (sh:':p'shangk') rt. A knot used to shorten a line.
`‘hoops-head (shEps‘hl5d') n.
`1. A food lish. Artllosar-gnu pra-
`bamcep/talus, ul American Atlantic waters. having dark. vertical
`markings. 2. Archaic. A silly or stupid person.
`[Sense l. lrom
`the resemblance of its teeth to those or a sheep]
`gasp-shear-ing (shép’shir'tng) n. 1. The act at shearing sheep.
`2. a. The time or season when sheep are sheared. h.The fes-
`xivities held at this time. ——shoep’ahoar'or II.
`_
`ghoop-skin (sht‘:p’sltln') n. 1. The skin of a sheep etthcr tanned
`with the fleece left on or in the form of leather or parchment.
`2. A diploma.
`-
`guup-wood (shép’wéd') n. A plant. the twnorwort lsre).
`finer‘ (shir) v. ahanrnd, shearing. shun.
`-—-intr. To swerve or
`deviate from a course.
`-—rr. To cause to swerve or deviate.
`.—a.
`1. A swcrving or deviating course. 2. Nautical.
`a. The
`2rd curve. or the amount of upward curve. of the longi-
`{adinal lines of a ship's hull as viewed from the side.
`ta. The
`podtion in which a ship is placed to enable it to keep clear of a
`g'q,lc bow anchor.
`|Perhaps a variant of sH£AIt.]
`gage (shit) ad/. allooror. ahoonst. 1.Thin. fine. and trans-
`puxnt: diaphanous. Said ol a labric. 1. .\'ot mixed or blended
`-id: anything; undiluted; pure: “the mole -vqglad his taesfrorn
`sheer happiness" (Kenneth Grahame).
`3. Perpendicular or
`git: perpendicular: sleep: “Slicer greyrlone walls. ..agat'n.r!
`.fie pale yellow sky" (Dodi: Smith). —4dr. Pa-pendicularly or
`purl) perpendicularly: "A 31002.. . would have fallen .r/leer
`kunrsnrd one tltourand fret" (Ambrose Bieroe).
`[Perhaps
`Midi: English xchir. bright. shining. Old English nil. See alti-
`’: Appendix.‘| —ahoo/ly adv. —-due/nope It.
`finer-lags. Variant ol about logs.
`A-ot‘(
`')n.A nah. 1.Areeunxuhrpieoeo 'enor
`finds. iaflriant olbzhoon.
`' lm
`.‘—ihr material serving as a basic article of bedding. commonly
`used in pairs. one above and one below the body olthesleeper.
`LA broad.
`thin. usually reetanguhr Ins or piet: ol any
`material. as paper. metal. glass or plywood. J. A broad. flat.
`eouchauous surlaoe or expanse: 4 died ofluit 4. A newspaper.
`especially. a tabloid. 5. Geology. A broad. rdativefi thin de-
`posit or layer of igneous or sedirnaataq rock. 1 finitely. The
`large block of stamps printed by a single i-prcaiou ol a plate
`bdore the individual stamps have has swarmed. —-rm.
`ahooted.ehoedng.ahoou. To oovuvim.-rap"-.orprovide
`with a sheet or sheets.
`[Middle Engifi rebut. cloth. hen.
`towel. Old English stile. See u|taud- in Appraiafl
`sheet‘ (shit) rt. Nautical. A rope or ch'.‘— attached to one or
`both of the lower corners of a saiL sorfq to -9-eotdnnd it.
`—tl'tru shoots to the wind. III/Druid. Dli. -‘$7.7. iobl.
`shooting. shoots. Nautical. To extant '- a cert‘ iveaiou.
`Used of the sheets of a sail.
`[Middle % rebut. OH
`English sciata. corner of a sail. See 1-5 '3 App¢£r.']
`shut anchor. I. A large extra anchor handed In-aria rau-
`gency. 2. A person or thing that an be tn-and to in tin: out
`emergency.
`[Perhaps SHEET (rope) 4- ml
`shut bend. A knot in which one rope or phrxuly-I ind:
`fast to the bight of another.
`sheet
`lasl. Molten glass drawn into a -ik A-1-iii. aha’
`anneafing and hardening. is cut into roq-ind j.
`shoot-ing (shé’tlng) n. 1. Any rnateriaL 5 -ficrfi. and
`to make a sheet. 2. The act or protxsa cl fij
`sheet lightning. Lightning that appan II I jA
`illumination oi parts oi a thundercloud.j htju
`ol a lightning flash.
`about music. Music printed on unbound jigs’.
`shoots (shits) pl.n. Naulical. The spaea 1 Oslo:-luau at
`an open rowboat that are not occupied & j.
`Shel-field (shel’éld). A city and cut
`‘ 1:
`ol the West Riding. Yorkshire. England lbj.
`she-got: (sha'glls) rt.. pl. ehkoerlm lshk6r't.l. I. If-he-3
`boy or young man. Usually used dispcj. 2.1 hfd
`boy or young man who lails to live up toAli
`teachings or practices. Usually used diquffi. [IT
`rlteygeu-_ from Hebrew sheqes. blemish]
`Iheilt (shék. shalt) it. Also ahoilth.
`t.¢.A Mi fuss
`official.
`b. The leader ol an Arab i. 1 at 1;
`2. Slang. A romantically alluring Inn. [him X
`man. from slttilcha. to be old.)
`Sheik-dom (sh€k'd3m. Sh5lt'-l It. The an i h I Ari.
`Shot-la (shé’l:). Also Shotfitah. A ljé-j. fifi.
`variant ol CE|.lA.]
`ahei-tan. Variant of imam.
`their-oi (shelt‘al) ll.
`1. Any of several 11 —'uul unfit;
`€SpocIally.
`a Hebrew unit equal to tan fun-nor. LA
`[old or silver coin equal in I-eifix auendéfij cape
`cully. the chief silver coin of ti: Han-5 IL‘. Acnit:
`Cult: money.
`[Hebrew Hind. he-I Aiul. D -"fl. at’: to
`Akkadian rhiqlu. a weight]
`1'-but-nah lshi-ké'na) I. A -is-3-I: —i—-‘— at the divine
`l_
`' ht/th thin. pati ‘II his. ml? jfijv édi with]
`I Iami'trFr.leI.Ger schil‘iFv uranumcaua
`
`sheep dog l
`presence as described in Jewish theology.
`[Hebrew altakltfntih.
`lrom shtikhan. to dwe|l.]
`she!-drake (shel’drak’) n. 1. Any of various large Old World
`ducks of the genus Tadorna; especially. 7'.
`tadorna. having
`' predominantly black and white plumage. Also called “shel-
`duck." 2. Any of several other ducks: especially. the morglrlaor
`lies].
`[Middle English shrldrdralte :
`t-held-. variegated. per-
`haps ol Low German origin. akin to Middle Dutch rchillede
`(see akel-' in Appendix‘) + prune (duclt).)
`shell (shell) rt.. pl. aholvoa (shelvz). 1. A llat. usually rectangular
`structure or a rigid material. as of wood. glass. or metal. fixed at
`right angles to a wall or other vertical surlace and used to hold
`or store objects. 2. The contents or capacity ol such a structure.
`3. Anything resembling such an object. as a balcony or a ledge
`of rock. 4. A reel, sandbar. or shoal. 6. Mining. Bedrock.
`—on the shall.
`1. in a state of disuse: put aside. 2. Unem-
`ployed; out of circulation: retired.
`[Middle English Mel/lei,
`pen ix.‘
`perlaaps Iltom Middle Low German re/Ielfl See altnl-‘ in Ap-
`shall ice. An extension of glacial ice into coastal waters,
`in
`contact with the bottom near the share but not toward the outer
`edge of the shell.
`Shol-i-kol Strait (she|'l-kol'). A strait 30 miles wide between
`the Alaska Peninsula and-the Kodiak and Aiognalt islands.
`shell (shel) n. 1. a. The usually hard outer covering that encases
`eenain organisms.
`is. A similar outer covering on an egg. lruit.
`or nut. 2. The material composing such a covering. 3.Any-
`thing resembling or having the lam: ol such a covering. espe-
`cially: a. A lrameworlt or exterior. as ol a building. b. A thin
`layer ol pastry. c. The hull of a ship.
`is. The external part of
`the car. a. A long. narrow racing boat propelled by oarsmen.
`4. a. A projectile or piece of ammunition: especially. the hollow
`tube containing explosives used to proocl such a projectile.
`b. A metal or cardboard ease. containing the charge, primer.
`and shot. fired lrom a shotgun. K.An attitude or manner
`adopted to mask one‘: true leelmgs. I. Physics. a. Any ol the
`set at hypothetical spherial surfaces oeutaed on the uucleusoi
`an atom that contain the orbits ol deeuons having the same
`principal quantum number. hence. all the demons in an atom
`that have the same prindpll quantum number. L Any ola set
`of groupings oi nucleon energy states ‘a a nucleus. or of nu-
`cloons occupying such suits. in which the Satin aaa-p'u of
`states diller from one another by much I: than It-on the bind-
`ing eoergiesoluatesinanothauoupiu. —v.u-ul-1.-using.
`at-cl; —n.1.aTo renovethrhdefz to shad. h.'l’o
`runovelromasbelLpod.ortheEg zfoaqua-aaefiebanels
`ol(cora)!rotntheoob.3.ToIiefi1-is
`V
`Iannnl.To pay._Usedau. —a'utr. To
`En¢hstAt!.(Id&i¢aud.aa‘l.See
`
`shelter
`
`shell
`A Harvard Culvert:
`racing cre-
`
`aheet bend
`
`t.Toawhtsi&eaa.
`hfinl.-bI:itiI3:_-hes. —-tr.
`To deleat decisively. Usually used of a sporfi
`3. 510'. To administer blows to: batter
`. —h. To
`apply shellac.
`lsnstlt.) + uc (laequer).)
`$1-hock (sh£l'b8k') n. A veteran sailor: cspedaly. 1 tin
`eaauaaiee.
`is ajossedltlte equator.
`[Originally an old sailor hail
`$1-tdk (sh€l’birk’)
`II. A tree. the ahagbarlr [Jul-
`éd boon. Any of various beans cultivated for Ilsa“ efih
`weds rather than for their pods.
`~
`Gd-b1(s.bel’e). Mary Wollstonocralt (Godwin). I797-I851.
`novelist: author of FranIren.rret‘n,- wile ol P.B. Shelley.
`fid-by(shel'é). Percy Byuho. l792—l822. En lisll poet.
`dd-in (sheI'fir') II. The liring of artillery proieqiles at, or
`their rooeption in. a target area.
`fidriuh (shél’l'lsh') n.. pl. shellfish or -num. Any aquatic
`aa'—al having I shell or shell-like exoskeleton, as a mollusk or
`Grain.
`fifl-low-or (sl'tcl’llou':r) n.
`I. A tall plant. Molucella Ian-Er.
`native to Asia. having tiny flowers and conspicuous green ca-
`lnn Also calle