TTABlog Test: Is WHOLESALEHOME Merely Descriptive of Dusting Cloths?

The USPTO refused registration of the proposed mark WHOLESALEHOME for "Cloth for wiping or dusting," deeming the mark to be merely descriptive under Section 2(e)(1). The Examining Attorney based the refusal on the connection between the mark and the nature of the means through which the goods are sold (i.e., wholesale). Applicant Ababoo argued that only a direct connection between the mark and the goods themselves will support a Section 2(e)(1) refusal. How do you think this came out? In re Ababoo LLC, Serial No. 90874152 (July 11, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

The proposed mark WHOLESALEHOME "will be found merely descriptive if the individual components are merely descriptive, they retain their descriptive meaning in relation to the identified goods, and the combination does not form a mark which has a distinctive nondescriptive meaning of its own as a whole."

Examining Attorney Jeri Ficke maintained that the mark "immediately and directly describes to consumers potential features of applicant's wiping and dusting cloths, namely, their marketing environment and their intended area of use." The Board observed:

If a sufficiently direct connection exists between a meaning of the mark to relevant consumers, on one hand, and the nature of the Applicant’s business, as it relates to the sale of the goods, on the other hand, such a connection can support a Section 2(e)(1) merely descriptive refusal. See, e.g., In re Major League Umpires, 60 USPQ2d 1059, 1062 (TTAB 2001) (finding the mark MAJOR LEAGUE UMPIRES for baseball gear was merely descriptive because the Applicant was a business created and owned by former Major League baseball umpires).

On the other hand, in In re Recreational Equip., Inc., 2020 USPQ2d 11386 (TTAB 2020). the Board held that the connection between a cooperative business and the applicant was too general to support a mere descriptiveness refusal of CO-OP for bicycles.

The Board noted that applicant's own website showed that it sells home products at wholesale. "These are specific details about Applicant’s business, similar to the scenario in the Major League Umpires case. There is a clear and specific connection between the proposed WHOLESALEHOME mark and Applicant’s business. That connection supports the refusal."

The evidence submitted by the Examining Attorney shows that relevant consumers are likely to understand Applicant’s proposed WHOLESALEHOME mark as describing Applicant’s store or business. To summarize that evidence, cleaning cloths are a home product or within the category of home goods. Selling such goods at wholesale is nothing new, so the concept is known to consumers. And Applicant is trying to register a term that consumers will recognize as a type of store that sells home goods at wholesale, which is exactly what Applicant does. The connection between the proposed mark and Applicant’s business is direct and specific.

The Board concluded that the combination of WHOLESALE and HOME does not result in a unitary mark with a separate, nondescriptive meaning. "Rather, each component retains its descriptive significance in relation to the goods such that the combination is descriptive." The absence of a space between WHOLESALE and HOME is of no consequence.

And so, the Board affirmed the refusal.

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TTABlogger comment: Done and dusted.

Text Copyright John L. Welch 2024.