Dolce Vita Footwear, Inc.

This Opinion is a

Precedent of the TTAB

Mailed: April 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Dolce Vita Footwear, Inc.

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Serial No. 88554722

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Susan A. Smith of Ballard Spahr LLP,

for Dolce Vita Footwear, Inc.

Alison F. Pollack, Trademark Examining Attorney, Law Office 106,

Mary I. Sparrow, Managing Attorney.

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Before Taylor, Adlin and Larkin,

Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Dolce Vita Footwear, Inc. (“Applicant”) seeks registration on the Principal

Register of the proposed mark CLEAR (in standard characters) for, as amended,

“Baggage tags, Handbags, Make-up bags sold empty,

Purses and wallets, Tote bags, All-purpose sport bags, All-

purpose carrying bags, Business card cases, Clutches, Coin

purses, Credit card cases; all of the foregoing excluding

transparent goods” in International Class 18.1

1 Application Serial No. 88554722 was filed on July 31, 2019, based upon Applicant’s

allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the

Trademark Act, 15 U.S.C. § 1051(b).

Serial No. 88554722

The Trademark Examining Attorney refused registration of Applicant’s mark

under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the grounds

that it is deceptively misdescriptive or, in the alternative, merely descriptive, of

Applicant’s identified goods. We affirm the refusal to register on the ground that

Applicant’s mark is deceptively misdescriptive; the alternative ground for refusal

that the mark is merely descriptive is moot.

I. Procedural Background

A review of the examination history will help clarify how the alternative refusals

were issued. As originally filed, the application identified the goods as “baggage tags;

handbags; make-up bags sold empty; purses and wallets; tote bags; all purpose [sic]

sport bags; all-purpose carrying bags; business card cases; clutches; coin purses;

credit card cases.” The Examining Attorney initially refused registration on the

ground that the applied-for mark is merely descriptive of the goods, relying in part

on the definition of “clear” as “[e]asily seen through; transparent,”2 and arguing that

the word “clear” is used by competitors to describe a feature of bags.

2 October 28, 2019 Office Action; TSDR 5. THE AMERICAN HERITAGE DICTIONARY OF THE

ENGLISH LANGUAGE (https://www.ahdictionary.com/word/search.html?q=clear).

Citations to the examination record refer to the USPTO’s online Trademark Status and

Document Retrieval system (TSDR) by page number in the downloadable .pdf versions of the

documents.

Citations to TTABVUE throughout the decision are to the Board’s public online database

that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first

number represents the docket number in the TTABVUE electronic case file and the second

represents the page number(s), if applicable.

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Serial No. 88554722

In response to the Office Action, Applicant explained that there are no transparent

items in its CLEAR collection, and made of record materials showing items included

in its “CLEAR” collection.3

Applicant, generally referencing an October 28, 2019 telephone conference with

the Examining Attorney, also addressed the yet-to-be-raised issue of deceptive

misdescriptiveness,4 arguing that its use of CLEAR is completely arbitrary, and that

it is not likely that persons could be fooled into thinking Applicant’s identified bags

are transparent because the consumer must see the goods when purchasing them and

will see that they are not transparent.

In her November 22, 2019 Office Action, the Examining Attorney maintained the

mere descriptiveness refusal and, based on Applicant’s admission that its bags were

not transparent, alternatively refused registration on the ground that the applied-for

mark is deceptively misdescriptive of the goods.

Applicant responded to the November 22, 2019 Office Action by arguing against

the refusals, and by proposing an amendment to its identification of goods to add the

following limiting language: “all of the foregoing excluding transparent bags, purses,

and clutches.”

3 The materials submitted by Applicant only show use of the proposed CLEAR mark in

connection with footwear. Accordingly, these materials have little probative value in this case

which involves non-transparent baggage tags, bags and cases.

4 Applicant particularly noted in its response that when its counsel advised the Examining

Attorney that its products are not transparent, the Examining Attorney responded that if the

mark is not descriptive, then it is deceptively misdescriptive. Applicant’s November 14, 2019

Response; TSDR 7.

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Serial No. 88554722

The Examining Attorney then issued a Final Office Action on February 10, 2020,

maintaining both Section 2(e)(1) refusals as to all the identified goods.5

Prior to the deadline for filing a notice of appeal, on June 29, 2020, Applicant filed

a Request for Reconsideration, proposing a second amendment to its identification of

goods to exclude “transparent goods” from all of the identified items and offering

additional arguments against the Section 2(e)(1) refusals.6

The Examining Attorney denied the Request for Reconsideration and apparently

accepted the further amendment to the exclusionary language to the identification of

goods.7

5 The Final Office Action did not directly address Applicant’s proposed amendment to the

identification of goods, however, the Examining Attorney includes the limiting language in

her references to the goods in her brief. We therefore consider the amendment to have been

accepted. We would be remiss if we failed to point out that when a proposed amendment is

acceptable to the Examining Attorney, the next Office Action should so state, leaving no room

for doubt going forward or in the case of an appeal.

6 Applicant asserts in its Request for Reconsideration that the Examining Attorney untimely

submitted new arguments and evidence and should have instead issued a non-final Office

Action. A review of the action shows that no new issues were raised and the refusals were

confined to the previously stated merely descriptive and deceptively misdescriptive refusals.

See In re Adlon Brand GmbH, 120 USPQ2d 1717, 1725 (TTAB 2016) (“Neither Applicant’s

new evidence and arguments regarding the outstanding refusal under Section 2(e)(4),

submitted with its request for reconsideration, nor the Examining Attorney’s submission of

additional evidence regarding the same refusal, provided in response to that request, raised

a new issue such as to make appropriate a nonfinal Office Action ….”) (citations omitted).

The Examining Attorney’s inclusion of supplementary evidence directed to additional

enumerated goods in support of previously issued refusals was not inappropriate. Applicant

could have addressed the additional evidence in its Request for Reconsideration, but did not

do so.

7 We presume so because the amendment was not rejected, nor was any rationale offered in

support of rejection. Although not addressed in the denial of the request for reconsideration,

the proceeding records have been updated and the subsequently-filed appeal briefs refer to

amended goods. This decision refers to the goods as amended. In addition, the Examining

Attorney’s failure to expressly accept Applicant’s second proposed amendment restricting all

of the identified goods to non-transparent items may have led to the maintenance of the

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Serial No. 88554722

Applicant then filed a timely Notice of Appeal on July 7, 2020. The appeal is fully

briefed.

II. Whether Clear is Deceptively Misdescriptive of Applicant’s Goods

Because of the amendment to exclude all “transparent goods” from the application,

we start with the deceptive misdescriptiveness refusal.

A. The Examining Attorney’s Arguments and Evidence

The Examining Attorney maintains that Applicant’s proposed mark is deceptively

misdescriptive of the identified goods. The Examining Attorney particularly argues:

(1) the evidence shows that the proposed CLEAR mark means “easily seen through;

transparent” which is merely descriptive of Applicant’s goods in that the public will

believe that Applicant provides transparent bags; (2) it is plausible that Applicant’s

bags, baggage tags and cases would possess such a feature because the evidence

shows that clear bags and cases are common8; and (3) a reasonably prudent purchaser

is likely to believe the representation (implied by the word “clear”) because it is

merely descriptive refusal, which, after that amendment, should have been withdrawn when

the Examining Attorney ruled on the request for reconsideration.

8 Applicant’s identification of goods includes additional items in Class 28 apart from the ones

specifically discussed above. However, if an applicant’s mark is merely descriptive or

deceptively misdescriptive for any of the listed goods in a single class in the application it

cannot be registered in that class. “A descriptiveness [or deceptively misdescriptive] refusal

is proper ‘if the mark is descriptive [or misdescriptive] of any of the [goods or] services for

which registration is sought.’” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102

USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77

USPQ2d 1087, 1089 (Fed. Cir. 2005)).

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Serial No. 88554722

common for bags and cases to be clear or transparent, but Applicant’s identification

of goods, as amended, specifically excludes transparent goods.9

In addition to the noted definition of the word “clear,” to show that CLEAR

describes a feature or characteristic that bags, cases, and baggage tags plausibly

possess, the Examining Attorney submitted the following:

 Screenshots from the third-party websites of Nordstrom Rack and

Bloomingdale’s showing descriptive use of the word in connection with bags,

as shown below:10

9 Examining Attorney’s Brief. 8 TTABVUE 5-9.

10 October 28, 2019 Office Action; TSDR 8-9 and 15-16.

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Serial No. 88554722

 An article in Travel and Leisure titled “9 Clear Bags You’ll Actually Be Able to

Find Your Stuff in for Once” states:

 With a transparent bag, you’re able to go in and grab

whatever you set out for without wasting time

rummaging through expired metro tickets while

your bus driver rushes you in Portuguese. Plus,

you’ll be much more inclined to stay organized,

sheerly because the world can see the contents of

your bag.11

 An article in Rank & Style titled: “WE’VE JUST MADE FINDING

THE PERFECT CLEAR HANDBAG SUPER EASY” states:

 Clear bags are having a moment again, and we

are definitely not mad about it. This cool nod to the

‘90’s is also practical as stadiums have introduced a

new clear bag policy in an effort to up security. … Is

there any true downside to this trend? Fashion

brands certainly don’t seem to think so because

they have all jumped at the chance to

capitalize on it in the most stylish of ways.

From essential stadium bags to playful totes to

glamorous clutches, click through our list of Top 10

11 November 22, 2019 Office Action; TSDR 5-6.

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Serial No. 88554722

clear handbags to help you find the perfect,

transparent addition to your wardrobe.12

 A screenshot of the MARK & GRAHAM website, showing a “clear

striped tote” bag.13

 Website screen shots14 from Amazon Fashion (www.amazon.com)

featuring “clear vinyl luggage tags,”15 Capri Designs (https://clear

stadiumbags.com) featuring “clear stadium bags,”16 Hammitt Los Angeles

(www.hammitt.com) featuring “‘clear’ Tony SML” bag,17 Urban Outfitters

(www.urbanoutfitters.com) featuring a “clear zip wallet,”18 Pop Sugar

(www.popsugar.com) featuring a “clear makeup bag,”19 The Container Store

(www.containerstore.com) featuring “Clear Makeup Bags & Toiletry

12 Id. at TSDR 15-22 (emphasis added). The article also includes references and links to

purchase the bags, but images of only three bags are shown.

13 Id. at TSDR 11.

14 Full website citations are found at the TSDR cites.

15 February 10, 2020 Office Action; TSDR 5-10.

16 Id. at TSDR 12.

17 Id. at TSDR 14-15.

18 Id. at TSDR 19-20.

19 Id. at TSDR 23-24.

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Serial No. 88554722

Bags,”20 and shopbop (www.shopbop.com) featuring clear bags, including

crossbody bags.21

 An article from The Wall Street Journal (www.wsj.com) discussing the

transparent bag trend, titled “Would You Carry a Clear Handbag? The

trend in transparent bags is quite divisive among women. We examine

the pros and cons of going clear[.]”22

B. Applicable Law/Analysis

A mark is considered deceptively misdescriptive if: (1) the mark misdescribes a

quality, feature, function, or characteristic of the goods or services with which it is

used; and (2) consumers would be likely to believe the misrepresentation. See In re

Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White

Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc.,

221 USPQ 1213, 1214 (TTAB 1984)).

As to the first part of the test, a mark is misdescriptive when it is “merely

descriptive, rather than suggestive, of a significant aspect of the goods or services

which the goods or services plausibly possess but in fact do not.” In re Hinton,

116 USPQ2d 1051, 1052 (TTAB 2015) (citing In re Shniberg, 79 USPQ2d 1309, 1312

(TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005)). As to

the second part, the reasonably prudent consumer test is applied in assessing

whether consumers are likely to believe the misrepresentation. In re Hinton,

20 Id. at TSDR 27-28.

21 Id. at TSDR 31-33.

22 Id. at TSDR 35-36 (emphasis added).

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Serial No. 88554722

116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson

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

The dictionary definition and third-party website evidence made of record by the

Examining Attorney convince us that consumers will perceive CLEAR as describing

a feature or characteristic that tote bags, handbags, makeup bags, wallet and baggage

tags could plausibly have, namely that they are transparent, “clear,” or include

transparent or “clear” elements. Indeed, Applicant stated in its brief:

For purposes of appeal, Applicant will not dispute the

Examining Attorney’s assertion that CLEAR means

“transparent” when applied to bags and cases. … Given

that, it thus follows that if a party tried to register CLEAR

broadly for all forms of bags and cases, the mark would be

descriptive because it would describe a feature or

characteristic of one form of those goods (“transparent bags

and cases”) within the broader definition.

Applicant’s br. pp. 4-5. (Emphasis supplied and internal citations omitted).23

Applicant adds, however, that it “is not seeking to register CLEAR broadly for both

‘transparent and non-transparent bags and cases;’ it is only seeking to register it for

non-transparent bags and cases.” Id. (Emphasis supplied).24 Based on the evidence of

record, we have no doubt that consumers will immediately perceive the word “clear”

as describing a feature or attribute that Applicant’s baggage tags, and various types

of bags and cases, could plausibly have. We therefore find that Applicant’s restriction

of its identification of goods to non-transparent or non-clear goods is sufficient to show

(and in fact conclusively establishes) that the proposed CLEAR mark misdescribes a

23 6 TTABVUE 5-6.

24 Id at 6.

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Serial No. 88554722

feature or attribute of the goods in that Applicant’s identified goods do not possess

the characteristic of being “clear.” See generally Trademark Manual of Examining

Procedure § 1209.04 (Oct. 2018), and the authorities cited therein. Thus the first part

of the test for deceptive misdescriptiveness has been satisfied.

Applicant’s contention that its proposed mark CLEAR does not describe a

plausible feature of its goods because it has restricted its identification to exclude

transparent goods is unavailing. We cannot assume that consumers of Applicant’s

goods will be aware that its identification is so restricted, and the restriction is not

controlling of public perception. See In re Aquitaine Wine USA, LLC, 126 USPQ2d

1181, 1187-88 (TTAB 2018). Cf., e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337,

340 (CCPA 1978) (“[T]he locus of potential confusion is [not] in the files of the PTO.”);

In re Wada, 48 USPQ2d 1689, 1692 (TTAB 1998) (public is unaware of disclaimers

that “quietly reside” in the records of the Office).

Moreover, Applicant cannot avoid a finding of deceptive misdescriptiveness by

excluding from its identification the very characteristic that its mark is

misdescribing. Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB

2006) (“We find that the word CAFETERIA used in connection with restaurant

services that explicitly exclude cafeteria-style restaurants does misdescribe the

services.”). In addition, the record is devoid of any evidence that, as Applicant

proposes, the word “clear” suggests other meanings when used for or in connection

with baggage tags, bags and cases. Even so, that a term may have other meanings in

different contexts is not controlling. See In re Bright-Crest, Ltd., 204 USPQ 591, 593

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Serial No. 88554722

(TTAB 1979). “It is well settled that so long as any one of the meanings of a term is

descriptive [or misdescriptive], the term may be considered to be merely descriptive

[or misdescriptive].” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB

2018); In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018).

Having determined that the term misdescribes the goods, we now assess whether

consumers are likely to believe the misrepresentation. Again, the evidence shows that

various types of bags, cases, wallets and baggage tags may be transparent or “clear”

in whole or in part, and that those goods are described as such by those in the industry

and by ordinary consumers. As the record reflects, “[c]lear bags are having a moment

again”25 and fashion brands have jumped to capitalize on the trend, in all likelihood

because of the heighted security measures employed at airports, stadiums and other

public facilities. Also, as to baggage tags, clear elements are expected so that one may

easily verify ownership of one’s luggage. As a result, consumers seeing the proposed

mark CLEAR for baggage tags, cases, and various types of bags, in particular, are

likely to believe that those goods are clear or transparent even though they are not.

We are unpersuaded by Applicant’s assertion that reasonably prudent consumers

are unlikely to believe the “misrepresentation,” because bags and cases are displayed

to potential buyers at the point of purchase for visual inspection before purchase.26

In making this argument, Applicant relies on three Board decisions: In re Econoheat,

Inc., 218 USPQ 381, 383 (TTAB 1983) (SOLAR QUARTZ for space heaters), Nw. Golf

25 November 22, 2019 Office Action; TSDR 11.

26 6 TTABVUE 7-8.

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Serial No. 88554722

Co. v. Acushnet Co., 226 USPQ 240, 242-43 (TTAB 1985) (POWER-STEP for golf

clubs), and In re Robert Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE

SABLE for paint brushes made from synthetic fibers.

We find these decisions to be distinguishable in material respects from this case.

Unlike this case, the mark at issue in Robert Simmons included the word “sable,”

which is defined in, for example, the online version of MERRIAM-WEBSTER, as “the

color black,” yet the mark also included the term “WHITE” the antithesis of “black”

so consumers would not be deceived into believing WHITE SABLE paint brushes

would be made from the hair or fur of a sable.27 In Northwestern Golf, unlike in this

case, the term at issue (“STEP”) did not necessarily have a misdescriptive meaning

to consumers: purchasers would not “necessarily construe the word ‘STEP’ in

applicant’s [POWER-STEP] mark as signifying that applicant’s golf club shaft has

but a single step.”28 Nw. Golf, 226 USPQ at 242. Rather, “they might just as readily

believe that the word ‘STEP’ is used in the mark as a synonym for ‘step pattern.’” Id.

at 243. Finally, in Econoheat, there did not appear to be any evidence of solar-powered

quartz space heaters and, in fact, the term “Solar” referred to some other attribute of

the device: the type of heat emitted. See 218 USPQ at 382. Here, by contrast, there is

27 www.merriam-webster.com/dictionary/sable, last visited March 15, 2021. The Board may

take judicial notice of dictionary definitions, including online dictionaries which exist in

printed format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d,

823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re CyberFinancial.Net Inc., 65 USPQ2d

1789, 1791 n.3 (TTAB 2002).

28 The term “step” in that context meant a discrete point on the shaft of a golf club where the

shaft narrowed as it extended further from the handle and approached the club head. Nw.

Golf, 226 USPQ at 241.

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Serial No. 88554722

plentiful evidence of use of the term “clear” to describe transparent examples of the

goods at issue, and Applicant has offered no other possible meaning the term could

have in the context of these goods. Accordingly, we do not find that these cases

support Applicant’s arguments.

That upon visually inspecting Applicant’s baggage tags, bags and cases consumers

may understand that they do not include transparent or clear attributes does not

negate their understanding before they inspect the goods. If Applicant’s goods were

to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs,

magazine articles, or even Applicant’s future advertising) without an image of the

goods, a reasonable consumer seeking what the record shows to be a fashion trend

would believe that Applicant’s goods, promoted under the proposed CLEAR mark,

would be transparent or clear or feature such attributes. See, e.g., In re Woodward &

Lothrop Inc. 4 USPQ2d 1412, 1414 (TTAB 1987) (CAMEO held deceptively

misdescriptive of jewelry items because while a reasonable purchaser carefully

examining jewelry which has no cameos or cameo-like elements may not be deceived

into believing that it does, not all jewelry would be purchased in that manner; some

jewelry may be purchased from catalogs which either inadequately describe or depict

the jewelry items.); see also ALP of South Beach, 79 USPQ2d at 1014 (finding that

pre-sale deception may occur without a sale taking place based on the deception). Pre-

sale discussion and promotion leading to deception is likely in this case given the

popularity of transparent bags.

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Serial No. 88554722

In view of the above, we find that the second part of the deceptive

misdescriptiveness test also has been satisfied.

C. Conclusion

After reviewing the evidence of record, we find that both parts of the deceptive

misdescriptiveness test have been satisfied and are unrebutted and, accordingly,

Applicant’s proposed mark is deceptively misdescriptive within the meaning of

Section 2(e)(1). In view of our determination on the ground of deceptive

misdescriptiveness, the alternative ground for refusal that the mark is merely

descriptive is moot.

Decision: The refusal to register Applicant’s proposed mark CLEAR for the

identified goods on the ground that it is deceptively misdescriptive under Trademark

Act Section 2(e)(1) is affirmed.

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