In Re: Ddmb, Inc. , 681 F. App'x 919 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: DDMB, INC.,
Appellant
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2016-2037
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
86/312,296.
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Decided: March 8, 2017
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MATTHEW R. GROTHOUSE, Saper Law Offices, LLC,
Chicago, IL, for appellant.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by THOMAS L.
CASAGRANDE.
______________________
Before LOURIE, REYNA, and CHEN, Circuit Judges.
LOURIE, Circuit Judge.
DDMB, Inc. (“DDMB”) appeals from a decision of the
U.S. Patent and Trademark Office (“PTO”) Trademark
Trial and Appeal Board (“Board”) affirming the Examin-
2 IN RE: DDMB, INC.
ing Attorney’s rejection of the mark EMPORIUM
ARCADE BAR and Design, absent a disclaimer of the
term EMPORIUM. See In re DDMB Inc., No. 86312296,
2016 WL 552609 (T.T.A.B. Jan. 29, 2016) (“Decision”).
For the reasons that follow, we affirm.
BACKGROUND
DDMB sought registration on the Principal Register
of the mark EMPORIUM ARCADE BAR and Design (“the
mark”), as depicted below:
DDMB sought to register the mark in International Class
41 (for “providing video and amusement arcade services”)
and International Class 43 (for “bar services; bar services
featuring snacks”). See Decision, 2016 WL 552609, at *2.
The Examining Attorney refused registration under
15 U.S.C. § 1056, on the ground that the terms
EMPORIUM and ARCADE BAR are merely descriptive
and must be disclaimed. DDMB agreed to disclaim
ARCADE BAR but not EMPORIUM. Thus, the Examin-
ing Attorney issued a final refusal, which DDMB ap-
pealed to the Board.
The Board affirmed the Examining Attorney’s refusal
to register the mark absent a disclaimer of the term
EMPORIUM. The Board found that the term
EMPORIUM is descriptive of “video and amusement
arcade services,” “bar services,” and “bar services featur-
ing snacks.” See Decision, 2016 WL 552609, at *5. The
Board cited several dictionary definitions of EMPORIUM,
IN RE: DDMB, INC. 3
including: (1) “a large retail store, especially one selling a
great variety of articles”; (2) “a large store with a wide
variety of things for sale”; and (3) “a place of commerce;
trading center; marketplace.” Id. at *2. Based on those
definitions, the Board found that EMPORIUM “con-
not[ed]” the attributes of “size, variety of merchandise,
and trading activity” and noted that both “[a]rcades and
bars contain elements of these attributes.” Id.
The Board also examined the dictionary definitions of
“arcade” and “bar” and concluded that: (1) “[a]n arcade is
an emporium in the sense that it provides the visitor with
multiple opportunities to play a variety of different video
games”; and (2) “[a] bar is an emporium in the sense that
it is a retail outlet serving a variety of different alcoholic
beverages.” Id. Thus, the Board found that EMPORIUM
is descriptive of both arcade and bar services. The Board
noted that the combination of EMPORIUM with ARCADE
BAR does not give rise to a “unitary phrase”—which
would indicate that EMPORIUM is not descriptive as
used in the mark—but rather, each of the two terms
“create[s] [a] separate and distinct commercial impres-
sion[].” Id. at *3.
Finally, the Board cited seven third-party registra-
tions for marks containing the term EMPORIUM, regis-
tered for restaurant, catering, and bar services, wherein
EMPORIUM had been disclaimed. The Board explained
that such third-party registrations, while not binding
precedent, are useful as evidence, similar to a dictionary
definition, to show the meaning of the term. See id. at *4.
Thus, the Board concluded that EMPORIUM, as it relates
to video and amusement arcade services and bar services,
is merely descriptive and a disclaimer for that term is
required. Id.
DDMB timely appealed to this court. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(4)(B).
4 IN RE: DDMB, INC.
DISCUSSION
We review the Board’s legal conclusions de novo, In re
Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1365 (Fed.
Cir. 1999), and the Board’s factual findings for substantial
evidence, On-Line Careline, Inc. v. Am. Online, Inc., 229
F.3d 1080, 1085 (Fed. Cir. 2000). Substantial evidence is
defined as “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” In re
Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).
Whether a mark is descriptive is a fact question that we
review for substantial evidence. In re TriVita, Inc., 783
F.3d 872, 874 (Fed. Cir. 2015). A mark is descriptive if it
“‘consist[s] merely of words descriptive of the qualities,
ingredients or characteristics of’ the goods or services
related to the mark,” and, thus, “immediately conveys
knowledge of a quality or characteristic of the product.”
In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed.
Cir. 2004) (alteration in original) (quoting Estate of P.D.
Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543
(1920)).
The Lanham Act provides that the PTO can “require
the applicant to disclaim an unregistrable component of a
mark otherwise registrable.” 15 U.S.C. § 1056(a). A mark
or component is unregistrable if, “when used on or in
connection with the goods of the applicant,” it is “merely
descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). Thus,
the PTO “may require a disclaimer as a condition of
registration if the mark is merely descriptive for at least
one of the products or services involved.” In re Stereotax-
is, Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005).
On appeal, DDMB argues that the term EMPORIUM,
when used in connection with “bar services” and “video
and amusement arcade services,” is not descriptive, but
rather is suggestive. DDMB argues that the term
EMPORIUM does not “immediately convey” knowledge of
arcade and bar services “without resort to analysis or
IN RE: DDMB, INC. 5
speculation.” Appellant’s Br. 8. DDMB argues that the
dictionary definitions of EMPORIUM, including “market-
place,” “trading center,” and “retail store,” are “broad and
vague” and “encompass[] such a broad sweep of commer-
cial establishments” that the term cannot immediately
convey knowledge of DDMB’s services with any “degree of
particularity.” Id. at 8, 11. DDMB also argues that
EMPORIUM, defined as a “retail store,” connotes a place
of commerce for off-site consumption of the goods or
services sold; in contrast, DDMB’s video/arcade and bar
services are for on-site consumption of the goods and
services provided. Id. at 14.
Moreover, DDMB argues, the terms EMPORIUM and
ARCADE BAR form a single “unitary mark,” for which no
disclaimer can be required. See, e.g., Dena Corp. v. Belve-
dere Int’l, Inc., 950 F.2d 1555, 1560–61 (Fed. Cir. 1991).
DDMB argues that both (1) the “incongruous” use of the
term EMPORIUM as an adjective modifying ARCADE
BAR, instead of a noun, and (2) the “redundancy” of using
EMPORIUM and ARCADE BAR, nouns with “overlap-
ping” meanings, for video/arcade and bar services is so
“unique” and “strange” that it renders the combination a
“unitary mark” with no significant meaning beyond
identifying DDMB’s services. See, e.g., Appellant’s Br. 21,
22, 24. DDMB argues that the “incongruous redundancy”
of the mark would “cause the average consumer to inter-
pret the three words as one unitary phrase.” Id. at 22–24.
The PTO responds that the word EMPORIUM is de-
scriptive for DDMB’s services because it immediately
conveys the information of a commercial establishment
featuring a variety of beverages and video arcade games.
Appellee’s Br. 17. The PTO points to the dictionary
definitions of EMPORIUM, including a “place of com-
merce” or a “retail shop,” and argues that bars are a type
of “retail outlet” because they “sell drinks” and that
arcades, similarly, “provide games . . . when customers
place coins in them.” Id. Furthermore, the PTO argues
6 IN RE: DDMB, INC.
that EMPORIUM cannot connote only off-site consump-
tion of goods or services because one of the dictionary
definitions relied upon by the Board cited “pizza empori-
um” as an example, and pizza would likely be consumed
on-site at such an establishment. Finally, the PTO ar-
gues that EMPORIUM combined with ARCADE BAR
does not form a unitary mark because the composite mark
does not possess a “distinct meaning of its own.” Id. at 30.
The question before us is whether substantial evi-
dence supports the Board’s findings that, as applied to
DDMB’s services, EMPORIUM is merely descriptive and
does not form a unitary mark in combination with
ARCADE BAR. We agree with the PTO that substantial
evidence supports the Board’s determinations.
First, the Board found that EMPORIUM was descrip-
tive of “video and amusement arcade services” and “bar
services.” See Decision, 2016 WL 552609, at *2. That
finding was based on, inter alia: (1) dictionary definitions
of EMPORIUM indicating that the term connotes the
“attributes” of “size, variety of merchandise, and trading
activity”; (2) dictionary definitions of “arcade” and “bar,”
which indicate that arcades and bars contain elements of
those same attributes; (3) the example of “pizza empori-
um,” provided by the Merriam-Webster dictionary defini-
tion of “emporium,” indicating that goods or services may
be consumed on-site at an emporium; and (4) seven third-
party registrations disclaiming the term EMPORIUM for
restaurant, catering, and bar services, as evidence, simi-
lar to a dictionary definition, of the meaning of that term.
Id. at *2–3. We conclude that the foregoing constitutes
substantial evidence that supports the Board’s finding.
Second, the Board found that EMPORIUM ARCADE
BAR is not a unitary mark and, thus, EMPORIUM is not
arbitrary as used in the mark. See id. at *3. The Board
rejected DDMB’s “incongruous redundancy” argument,
explaining that there is no redundancy—“‘emporium’ does
IN RE: DDMB, INC. 7
not overlap with ‘bar’” because “the two words are not
synonyms.” Id. The Board also explained that the so-
called “incongruous” use of EMPORIUM to modify the
generic term ARCADE BAR does not, in and of itself,
render EMPORIUM arbitrary. Id. And the Board found
that the two terms do not form a unitary mark because
each term “create[s] [a] separate and distinct commercial
impression[].” Id.
We find the Board’s determination to be supported by
substantial evidence. For a composite mark to qualify as
a “unitary mark,” the elements of the composite must be
“inseparable.” Dena Corp., 950 F.3d at 1561. A unitary
mark must have “a distinct meaning of its own independ-
ent of the meaning of its constituent elements.” Id. (em-
phasis added). For example, our predecessor court held
that the composite mark SUGAR & SPICE is not descrip-
tive of bakery products. See Application of Colonial
Stores, Inc., 394 F.2d 549, 552–53 (C.C.P.A. 1968). There,
the court explained that while, individually, both SUGAR
and SPICE are descriptive of ingredients in bakery prod-
ucts, the composite SUGAR & SPICE possessed a “remi-
niscent, suggestive or associative connotation” due to the
well-known nursery rhyme—“sugar and spice and every-
thing nice”—and, thus, a “distinctive nature,” above and
beyond the individual components. Id. at 553. Unlike
SUGAR & SPICE, which has a meaning all its own,
“independent of the meaning of its constituent elements,”
Dena Corp., 950 F.3d at 1561, EMPORIUM ARCADE
BAR possesses no such independent significance. Thus,
the composite mark is not a unitary mark that renders
EMPORIUM, otherwise descriptive, exempt from a dis-
claimer requirement.
We note that DDMB agreed to disclaim ARCADE
BAR as descriptive of its services. Thus, the argument
that EMPORIUM is “redundant”—referring to DDMB’s
“incongruous redundancy” argument—with ARCADE
BAR would seem to be an admission that EMPORIUM is
8 IN RE: DDMB, INC.
also descriptive of those same services. Nevertheless,
because we find the Board’s findings to be supported by
substantial evidence, we need not reach the issue of
whether DDMB’s argument constitutes an admission.
We thus conclude that the Board’s findings that
EMPORIUM is descriptive of DDMB’s services and that
EMPORIUM ARCADE BAR is not a unitary mark are
supported by substantial evidence.
CONCLUSION
We have considered DDMB’s remaining arguments
but find them to be unpersuasive. For the foregoing
reasons, we affirm the decision of the Board.
AFFIRMED