Abbyson Living LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: September 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board

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In re Abbyson Living LLC

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Serial No. 87099335

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Jaye G. Heybl, Ferguson Case Orr Paterson LLP, for Applicant.

Benji Paradewelai, Trademark Examining Attorney, Law Office 101, Ronald R. Suss-
man, Managing Attorney.

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Before Mermelstein, Larkin, and English, Administrative Trademark
Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Alleging an intent to use its mark in commerce, Applicant seeks registration on

the Principal Register of the mark CYPRESS (in standard characters) for “furniture”

in International Class 20.1 Registration was initially refused on the ground that the

mark is merely descriptive of the identified goods.2 When Applicant informed the Ex-

amining Attorney that its furniture “is not made of cypress wood,” 4 TTABVUE 4-5

(Req. for Recon. (Oct. 10, 2017)), the Examining Attorney issued a refusal to register

1 Filed July 11, 2016.
2Registration was additionally refused under Trademark Act § 2(d), but the refusal was with-
drawn when the cited registration was cancelled.
Serial No. 87099335

on the ground that the mark is deceptively misdescriptive. Trademark Act § 2(e)(1),

15 U.S.C. § 1052(e)(1). When the refusal was made final, Applicant appealed.

We affirm.

I. Applicable Law

The test for determining whether a term is deceptively mis-
descriptive involves a determination of (1) whether the
matter sought to be registered misdescribes the goods and,
if so, (2) whether anyone is likely to believe the misrepre-
sentation.

In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady

Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984)).

The first prong of the test is satisfied if the mark is merely descriptive of a signif-

icant property that the goods could, but do not, possess. In re Hinton, 116 USPQ2d

1051, 1052 (TTAB 2015). And to be merely descriptive, a mark must “immediately

convey[?] knowledge of a quality, feature, function, or characteristic of the goods . . .

with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102

USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 963, 82

USPQ2d 1828, 1831 (Fed. Cir. 2007)).

Under the second prong of the test, we ask whether a reasonably prudent con-

sumer would be likely to believe the misrepresentation made by the mark. In re Hin-

ton, 116 USPQ2d at 1052 (citing R.J. Reynolds Tobacco Co. v. Brown & William-

son Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

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Serial No. 87099335

II. Discussion

A. Does CYPRESS misdescribe furniture not made of cypress?

The Examining Attorney’s evidence amply demonstrates that “cypress” is the com-

mon name of a genus of trees, and that the wood of the cypress tree — also known as

“cypress” — is used to make furniture. E.g., Ofc. Action (Oct. 3, 2016), TSDR 11 (def-

inition of “cypress”); TSDR 20–21 (webpage for Don Hostetler’s Fine Cypress Furni-

ture); TSDR 23–24 (webpage for Cypress Moon Handmade Cypress Furniture); TSDR

25 (webpage for Southern Cypress Furniture); TSDR 27–29 (myNewOrleans.com ar-

ticle: Cypress Furniture); TSDR 36 (webpage Woodworking with Bald Cypress);

TSDR 38 (webpage Best Woods for Outdoor Projects (including cypress)); Ofc. Action

(Apr. 10, 2017), TSDR 8–9 (Times-Picayune article discussing a cypress dining table);

TSDR 10–12 (Arkansas Democrat-Gazette article mentioning “handcrafted cypress

furniture”); TSDR 14 (Times-Picayune article mentioning “furniture made from Lou-

isiana cypress”); Ofc. Action (May 23, 2018), TSDR 36–40 (webpage of FurnitureBarn

USA advertising “Cypress” furniture); TSDR 52 (webpage advertising cypress

dresser); TSDR 61–67 (SANDYDELUCA DESIGN webpage “How To Choose The Cy-

press Wood Furniture”).3

This evidence shows that CYPRESS is commonly used to describe furniture made

of cypress. A consumer seeing the mark CYPRESS used in connection with furniture

would therefore immediately, and without conjecture, understand the mark to refer

3 While the cited evidence is sufficient to support the Examining Attorney’s case, there is
considerably more in the record.

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Serial No. 87099335

to the composition of the furniture. The mark would thus be merely descriptive if the

furniture in question were made in whole or in part of cypress. But because Applicant

maintains that its goods are not made of cypress, the mark is misdescriptive.

B. Are consumers likely to believe that Applicant’s furniture sold
under the CYPRESS mark is made of cypress?

It is also clear from the evidence of record, see above-cited examples, that a rea-

sonably prudent consumer would believe Applicant’s misrepresentation. Cypress is

more than a merely theoretical or unusual material from which to build furniture,

and the record makes clear that a number of retailers sell furniture made of cypress,

and describe it using the word “cypress.” Therefore, prospective purchasers seeing

Applicant’s mark CYPRESS used on furniture would readily believe that it is made

— at least in substantial part — of cypress.

C. Applicant’s arguments.

Applicant maintains that the mark does not misdescribe the goods:

The Examining Attorney states that the mark misde-
scribes that the furniture is made of cypress wood. How-
ever, the mark is CYPRESS, not CYPRESS WOOD. The
mark CYPRESS is not immediately descriptive of the
goods. Accordingly is [sic] cannot be misdescriptive of the
goods.

App. Br., 19 TTABVUE 4.

We disagree. While the mark is not CYPRESS WOOD, it is abundantly clear from

the evidence of record that the word “cypress” alone is commonly used to generically

refer to the wood of the cypress tree and to describe furniture made from it. While

some of the evidence shows use of the term “cypress wood,” we have no doubt that

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Serial No. 87099335

consumers would understand that to be equivalent to “cypress” when the context in-

dicates reference to wood or articles made of wood.

Applicant further argues that even if the mark is misdescriptive, purchasers are

unlikely to believe the misrepresentation:

CYPRESS is used as a mark by third parties for various
goods, from lamps to rugs. See Exhibit A. CYPRESS is even
a registered mark on the principal registry for the goods
“recreational vehicles, namely, park trailers and destina-
tion style travel trailers made of wood and as house-
like style tiny houses”, which the Applicant stated in an
Office Action response are not made from cypress wood
(Reg. No. 4,763,070) (emphasis added). See Exhibit B. Yet
there is no indication of consumers believing that any of
these products are made from the cypress plant rather
than CYPRESS being a suggestive mark.

App. Br., 19 TTABVUE 5.

Again, we disagree. The fact that CYPRESS is used on items such as rugs or cloth-

ing, which are not normally made of cypress or any wood, shows only that the term

is sometimes used as an arbitrary designation. But it does not follow that CYPRESS

is not descriptive or misdescriptive when used on goods that are or could be made of

cypress. Applicant also points to a registration for the mark CYPRESS for “recrea-

tional vehicles, namely, park trailers and destination style travel trailers made of

wood and as house-like style tiny houses,” as evidence that its mark is registrable.

However, the question before us is whether the mark in the application before us is

registrable based on this record. Third-party registrations “are not conclusive on the

question of descriptiveness.” In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519

(TTAB 1977). Even if there are third-party registrations using similar words, the

Board “must decide each case on its own merits.” In re Nett Designs, Inc., 236 F.3d

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Serial No. 87099335

1339, 1342, 57 USPQ2d 1564 (Fed. Cir. 2001). We find that the noted registration is

entitled to little weight in our decision.

Finally, Applicant correctly points out that the question of descriptiveness may

not be resolved by guesswork, but rather must be considered from the prospective of

someone who knows what the goods are. DuoProSS Meditech Corp. v. Inviro Med.

Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Applicant con-

tends, however, that “A normal consumer of furniture would not be led to think that

all furniture would be made of wood especially cypress wood.” App. Br., 19 TTABVUE

5. The problem with Applicant’s argument is that the application identifies Appli-

cant’s goods as simply “furniture.” Because there is no limitation in the application,

we must construe Applicant’s furniture to include all furniture, including furniture

that is or could be made of cypress. See Stone Lion Capital Partners, LP v. Lion Cap-

ital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (“Parties that

choose to recite services in their trademark application that exceed their actual ser-

vices will be held to the broader scope of the application.”). And if the mark is misde-

scriptive with respect to any goods within the scope of the identification, registration

must be refused. In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA

1975) (citing In re Am. Soc’y Clinical Pathologists, Inc., 442 F.2d 1404, 169 USPQ

800, 801 (CCPA 1971)). Whether customers would think that all furniture is made of

wood in general or cypress in particular is irrelevant.

III. Conclusion

Having considered all of the evidence and argument of record, including that

which we have not specifically discussed, we conclude that Applicant’s mark,

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Serial No. 87099335

CYPRESS, is deceptively misdescriptive of “furniture.”

Decision: The refusal to register under Trademark Act §§ 2(e)(1) is affirmed.

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