Brook & Whittle Limited

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: October 20, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Brook & Whittle Limited
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Serial No. 98590492
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Alexander S. Perry and Jillian M. Taylor of Blank Rome LLP,
for Brook & Whittle Limited.
Philip Liu, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____
Before Lykos, Elgin, and Lavache,
Administrative Trademark Judges.
Opinion by Elgin, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register of the composite mark
for goods ultimately identified as:
Opaque light blocking plastic flexible packaging film for
commercial and industrial purposes sold in bulk to
commercial and industrial manufacturers; light blocking
plastic films used for packaging for food; heat shrinkable
plastic films containing light blocking elements for use on
food packaging; light blocking plastic stickers for labeling
products; light blocking plastic films used for foodstuff
packaging; heat shrinkable plastic films containing light
blocking elements for use on foodstuff packaging; clear

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light blocking plastic films used on food packaging
featuring light blocking elements; clear heat shrinkable
plastic films containing light blocking elements for use on
food packaging featuring light blocking elements;
recyclable light blocking plastic films used for foodstuff
packaging; recyclable heat shrinkable plastic films
containing light blocking elements for use on foodstuff
packaging in International Class 16;
Light blocking adhesive-backed plastic films for use in the
manufacture of durable labels; light blocking plastic films
for use in the manufacture of product labels; recyclable
light blocking plastic films for use in the manufacture of
product labels in International Class 17; and
Heat shrinkable plastic labels containing light blocking
elements for use on food packaging; light blocking plastic
product labels; light blocking plastic product labels with
light blocking coatings; recyclable light blocking plastic
product labels in International Class 20.1
Applicant has disclaimed “BLOCK OUT” apart from the mark as shown. Trademark
Act Section 6(a), 15 U.S.C. § 1056(a).2
The Examining Attorney refused registration of Applicant’s proposed mark under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that it is merely
descriptive as applied to the goods identified in the application. Applicant appealed
1 Serial No. 98590492 was filed on June 7, 2024 under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b), based upon an allegation of a bona fide intention to use the mark in commerce.
The mark is described as follows: “The mark consists of the wording ‘BLOCKOUT’ in stylized
font, wherein the wording ‘BLOCK’ is inside a rectangle.” Color is not claimed as a feature of
the mark.
2 Although Applicant described the mark as one compound word (i.e. BLOCKOUT), the
disclaimer is for two words (i.e. BLOCK OUT), in accordance with Office disclaimer practice.
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05(a) (May 2026) (“If the
compound word itself (with no spaces) is used descriptively, it should be disclaimed in that
form. Otherwise, the disclaimed portion should appear as two or more distinct words,
separated by spaces.”). Therefore, we refer to the literal element in the mark as BLOCKOUT
but the terms in the disclaimer as BLOCK OUT.

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and filed a request for reconsideration, which was denied. Following resumption of
the appeal, Applicant and the Examining Attorney filed briefs.3 The appeal is now
ready for decision.
For the reasons set forth below, we reverse the refusal to register.
I. Evidentiary Issue
We first address an evidentiary issue. Applicant’s arguments rest considerably on
“two other pending trademark applications for BLOCKOUT design marks covering
the same goods,” that is, Serial Nos. 98590484 and 98590490:4
Applicant claims that these applications were approved for registration on the
Principal Register with a disclaimer of BLOCK OUT, and the subject application
should be approved in light of the USPTO’s goal of consistency in examination.5
The Examining Attorney agrees that “Applicant correctly notes that all of the
applications were filed on the same day and for the same goods,” but further supplies
3 Applicant’s brief and reply brief are at 6 and 9 TTABVUE. The Examining Attorney’s brief
is at 8 TTABVUE. Citations in this opinion to the briefs and other materials in the case
docket refer to TTABVUE, the Board’s online docketing system. Citations to the prosecution
record refer to the .pdf version of the USPTO’s TSDR system. See In re Integra Biosciences
Corp., No. 87484450, 2022 TTAB LEXIS 17, at *6.
4 6 TTABVUE 7 (Applicant’s Brief).
5 Id. at 9, 11-12; see also 9 TTABVUE 8-9 (Applicant’s Reply Brief).

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that “the co-pending applications are not registered. Both of the co-pending
applications are currently pending in the Statement of Use stage of the trademark
prosecution process.”6
Unfortunately, neither Applicant nor the Examining Attorney made these co-
pending applications of record. Generally, “[t]he record in the application should be
complete prior to the filing of an appeal.” In re Seminole Tribe of Fla., No. 87890892,
2023 TTAB LEXIS 184, at *8 (quoting Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d))
(internal quotation marks omitted). The Board also typically does not take judicial
notice of USPTO records. Id. at *8-9.
However, because the Examining Attorney responded substantively and without
objection to Applicant’s arguments regarding the co-pending applications during
prosecution and in the Examining Attorney’s brief, we consider the facts about the
applications provided in the briefs as having been stipulated into the record. Cf. In re
Mayweather Promotions, LLC, No. 86753084, 2020 TTAB LEXIS 467, at *12-13 n.17
(failure to advise applicant of insufficiency of list of registrations when proffered
during examination, which examining attorney discussed in next office action, waived
objection); In re Broyhill Furniture Indus., No. 75473959, 2001 TTAB LEXIS 612, at
*6 n.3 (considering list of third-party registrations for its probative value).
6 8 TTABVUE 9, 10 (Examining Attorney’s Brief); see also id. at 11 n.2 (“Applicant submitted
a Statement of Use on March 13, 2026, for both of the copending applications”).

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II. Applicable Law
Section 2(e) of the Trademark Act excludes from registration any “mark which,
(1) when used on or in connection with the goods of the applicant is merely descriptive
... of them ….” 15 U.S.C. § 1052(e)(1). A mark is “merely descriptive” within the
meaning of Section 2(e)(1) “if it immediately conveys information concerning a
feature, quality, or characteristic of the goods or services for which registration is
sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 975 (Fed. Cir.
2018) (citing In re N.C. Lottery, 866 F.3d 1363, 1367 (Fed. Cir. 2017)); see also In re
Chamber of Com. of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012). “A mark need not
immediately convey an idea of each and every specific feature of the goods in order to
be considered merely descriptive; it is enough if it describes one significant attribute,
function or property of the goods.” In re Fat Boys Water Sports LLC, No. 86490930,
2016 TTAB LEXIS 150, at *4 (citing In re Gyulay, 820 F.2d 1216, 1218 (Fed. Cir.
1987)).
Descriptiveness is not considered in the abstract; it is analyzed in relation to an
applicant’s identified goods or services, “the context in which the [term] is being used,
and the possible significance that the term would have to the average purchaser of
the [goods] because of the manner of its use or intended use.” In re NextGen Mgmt.,
LLC, No. 88098031, 2023 TTAB LEXIS 1, at *7-8 (quoting In re Bayer AG, 488 F.3d
960, 963-64 (Fed. Cir. 2007)); see also Chamber of Com., 675 F.3d at 1300; Fat Boys,
2016 TTAB LEXIS 150, at *4. We ask “whether someone who knows what the goods
and services are will understand the mark to convey information about them.” Real

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Foods, 906 F.3d at 974 (quoting DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012) (internal quotation omitted)). A mark is
suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach
a conclusion about their nature from the mark. See, e.g., Fat Boys, 2016 TTAB LEXIS
150, at *11.
Thus, refusals for mere descriptiveness, like other refusals, are based on evidence
bearing on public perception of the mark. The determination whether the stylization
and design of an otherwise unregistrable designation are sufficiently distinctive is “a
necessarily subjective one” based on a viewer’s first impression. See In re Bonni Keller
Collections, Ltd., No. 73446902, 1987 TTAB LEXIS 12, at *9; In re Sadoru Grp., Ltd.,
No. 77941164, 2012 TTAB LEXIS 325, at *4. We “consider the commercial impression
of a mark as a whole … viewed through the eyes of a consumer.” Real Foods, 906 F.3d
at 974 (cleaned up, quoting DuoProSS, 695 F.3d at 1253) (emphasis in original
omitted); In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001) (“The
perception of the relevant purchasing public sets the standard for determining
descriptiveness.”).
III. Arguments
We start by recognizing that Applicant has entered a disclaimer of the literal
element BLOCKOUT in the mark.7 The disclaimer reflects a concession that the term
7 Applicant contends that “[t]he Examining Attorney also rejected Applicant’s proffered
disclaimer of the term BLOCKOUT,” 6 TTABVUE 5 (Applicant’s Brief), but this is not correct

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is not inherently distinctive as applied to Applicant’s goods. See, e.g., In re Six
Continents Ltd., No. 88430142, 2022 TTAB LEXIS 35, at *23 (disclaimer of SUITES
in mark ATWELL SUITES “is a concession that ‘Suites’ is not inherently
distinctive”) (citing In re DNI Holdings Ltd., No. 76331011, 2005 TTAB LEXIS 515,
at *25 (“[I]t has long been held that the disclaimer of a term constitutes an admission
of the merely descriptive nature of that term … at the time of the disclaimer.”)). In
sum, it is Applicant’s position that its composite mark is registrable with the
disclaimer.8
The question before us, therefore, revolves around the other elements in the
proposed mark and whether they render the mark inherently distinctive as a whole.
The Examining Attorney frames the issue before us as follows:
Also, by providing a disclaimer, applicant is relying on the
simple common rectangular background for registration on
the Principal Register. If descriptive or generic wording is
in fact presented in a distinctive display or design, the
mark as a whole may be registered with a disclaimer of the
unregistrable component. See In re Sadoru Grp., Ltd.,
[2012 TTAB LEXIS 325, at *4]. In this case, however, the
rectangular background is a basic design that is not
distinctive in any way and does not change or add anything
to the overall commercial impression of the mark apart
from the term BLOCKOUT.9
because the disclaimer is of record. See December 17, 2025 Trademark Snap Shot
Amendment & Mail Processing Stylesheet (entering disclaimer of “BLOCK OUT”). The
Examining Attorney’s argument is that, even with a disclaimer, the mark as a whole is not
inherently distinctive.
8 6 TTABVUE 5 (Applicant’s Brief).
9 8 TTABVUE 7 (Examining Attorney’s Brief).

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Thus, according to the Examining Attorney, “[t]he common rectangular geometric
shape or background is not sufficiently distinctive to create a commercial impression
separate from the word with which they are used, are not regarded as indicators of
origin absent evidence of distinctiveness of the design alone.”10
Applicant counters that its mark is more than just the literal element
BLOCKOUT in a mere geometric carrier design. In addition to “stylized lettering”:
The interplay between the inner filled rectangle containing
BLOCK, the absence of any rectangle around OUT, and the
contrasting use of positive and negative space creates a
cohesive design that communicates meaning beyond the
literal wording. This deliberate visual metaphor – where
the design elements echo and reinforce the semantic
content of the words – demonstrates the type of sufficient
substance or distinctiveness over and above the disclaimed
matter that warrants registration with a disclaimer.11
Although the Examining Attorney argues Applicant “provides no evidence to
support the claim that the design alone is distinctive or that consumers would
perceive this alleged metaphor,”12 Applicant argues that such evidence is not required
because “[t]he Board is well equipped to assess, from the face of the mark itself,
10 See id. at 8 (citing, inter alia, In re Benetton Grp. S.p.A., No. 74325713, 1998 TTAB LEXIS
219, at *5-6 (holding green rectangular background design not inherently distinctive)).
11 6 TTABVUE 11 (Applicant’s Brief). We acknowledge Applicant’s complaint that the
Examining Attorney rejected Applicant’s original mark description (referencing positive and
negative backgrounds and terms but omitting the rectangle shape) and then based the
“assertion of a common geometric shape” on the modified current description. Id. The
Examining Attorney counters that Applicant’s provided mark description, in omitting the
shape, was imprecise. 8 TTABVUE 11 n.1 (Examining Attorney’s Brief). Notwithstanding
this dispute, in defining the mark that Applicant seeks to register, we consider “all elements,
including those described in the application as well as those shown in the drawing page …
but we are not bound by what Applicant describes its mark to be in its application or in its
brief.” Kohler Co. v. Honda Giken Kogyo K.K., No. 91200146, 2017 TTAB LEXIS 450, at *57
n.48 (cleaned up; citations omitted).
12 8 TTABVUE 7 (Examining Attorney’s Brief).

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whether a design creates a commercial impression that goes beyond a mere simple
rectangular background carrier.”13 Moreover, Applicant criticizes the Examining
Attorney’s argument that Applicant must show the rectangular “design alone is
distinctive,” which Applicant argues would render the disclaimer requirement “a
nullity.”14 Applicant also asserts that the “background carrier” caselaw as set forth
in Benetton is the wrong standard because it is not seeking to register a background
design apart from the disclaimed literal element in its proposed mark.15
IV. Do the Design Elements and Stylization of Applicant’s Mark
Render It Inherently Distinctive?
Components of the proposed mark include the word
BLOCKOUT in a sans serif font, with the text BLOCK inside a rectangular shape in
contrasting text. The mark is not limited to any color or colors, and thus the drawing
is presumed to contemplate the use of the mark in any colors, without limitation. Bd.
of Trs. of Univ. of Ala. v. Pitts, No. 91187103, 2013 TTAB LEXIS 370, at *68-69 (citing
In re Data Packaging Corp., 453 F.2d 1300, 1302 (CCPA 1972) and TMEP
§ 807.14(e)(i) (2012)); see also In re Ala. Tourism Dep’t, No. 87599292, 2020 TTAB
LEXIS 191, at *11 (“We note, however, that merely because Applicant has not claimed
that color is a feature of the mark does not mean that Applicant could not depict the
13 9 TTABVUE 7 (Applicant’s Reply Brief).
14 Id. at 6 (citing 8 TTABVUE 7 (Examining Attorney’s Brief)).
15 6 TTABVUE 5-6 (Applicant’s Brief).

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flag design in the mark in its black-and-white drawing in any color or combination of
colors.”).
There is no dispute that the literal element BLOCKOUT is not inherently
distinctive because it has been disclaimed. See In re Omaha Nat’l Corp., 819 F.2d
1117, 1119-20 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for
banking services in the absence of a disclaimer of “FIRST TIER,” in view of evidence
that the term describes a class of banks). “A display of descriptive or otherwise
unregistrable matter is not registrable on the Principal Register unless the design
features of the asserted mark create an impression on the purchasers separate and
apart from the impression made by the words themselves ….” In re Cordua Rests.,
Inc., 823 F.3d 594, 606 (Fed. Cir. 2016) (quoting Sadoru, 2012 TTAB LEXIS 325, at
*4). Thus, “where the literal components of a mark are combined in a distinctive
design or display it is possible to disclaim those literal components and still have a
mark which is registrable as a whole.” Sadoru, 2012 TTAB LEXIS 325, at *4. In this
case, Applicant has not made a claim of acquired distinctiveness, and therefore the
stylization of BLOCKOUT and the design must create a separate and inherently
distinctive impression. Id.
There is no evidence of record from either the Examining Attorney or Applicant
as to the commercial impression of the stylized lettering or design, such as how
Applicant uses or intends to use its proposed mark. Nonetheless, “[w]hether or not
the disclaimed literal components of a designation sought to be registered are
displayed in an inherently distinctive fashion is necessarily a subjective matter which

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must be determined based on a viewer’s first impression.” Id. (citations omitted); see
also Bonni Keller, 1987 TTAB LEXIS 12, at *9 (the “determination of whether the
stylization of an otherwise unregistrable designation is sufficiently distinctive in
character to ‘rescue the designation as a whole is a necessarily subjective one ….”).
Although we consider Applicant’s revised description of the mark, “[a] mark’s
meaning is based on the impression actually created by the mark in the minds of
consumers, not on the impression that the applicant states the mark is intended to
convey.” In re Dimarzio, Inc., No. 87213400, 2021 TTAB LEXIS 457, at *22 (quoting
TMEP § 808.02 (July 2021)).
Applicant’s proposed mark can be seen as more than mere non-stylized text
superimposed on a geometric background design. Cf. In re Serial Podcast, LLC, No.
86454424, 2018 TTAB LEXIS 94, at *34 (finding design elements, the sans serif
typeface and color of the letters, and the rounded rectangular backdrops for each
letter of the marks and , each for
“entertainment in the nature of an ongoing audio program featuring investigative
reporting, interviews, and documentary storytelling,” not inherently distinctive).16
Arguably, the differently colored rectangle and contrasting superimposed text
create a commercial impression separate and apart from the disclaimed wording. The
16 The Board described the marks as “light-colored letters superimposed upon contrasting
dark rectangles with rounded corners, as in a crossword puzzle or tiles on a board game.”
Serial Podcast, 2018 TTAB LEXIS 94, at *46. But, unlike this case, the Board did not find
that the design had any particular meaning as applied to the identified entertainment
services.

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concept of positive and negative space is apparent in the mark and would remain so
even when rendered in colors other than black and white. The placement of the word
BLOCK within the rectangle (i.e., a block) can evoke the act of blocking light. The
rectangular design is more than a mere background carrier for the contrasting
superimposed block text.
We recognize that the Examining Attorney’s evidence demonstrates that both the
wording BLOCKOUT and the light-blocking function of the goods are described in
the trade.17 But that evidence bears on the descriptiveness of the wording, which
Applicant has conceded through its disclaimer; it does not establish that the design
and stylization immediately convey the light-blocking characteristic of the goods.
To the contrary, discerning the interplay of positive and negative space, and
connecting that visual treatment of the design and text to the light-blocking nature
of the films and labels, arguably requires imagination, thought, and perception on
the part of someone who knows what the goods are to reach a conclusion about their
nature, even when combined with the disclaimed matter. Cf. In re Swatch Grp. Mgmt.
Servs. AG, No. 85485359, 2014 TTAB LEXIS 131, at *12-13 (“[I]f the design suggests
information about the goods in a way that requires imagination, thought, or
perception to reach a conclusion as to the nature of the goods, it is not merely
descriptive within the meaning of Section 2(e)(1) and may be registered”; Board found
17 See 8 TTABVUE 4-6 (Examining Attorney’s Brief) (summarizing evidence).

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an accurate pictorial representation of the mark merely descriptive), aff’d per curiam,
599 Fed. App’x 959 (Fed. Cir. 2015).18
Reasonable minds can differ on the distinctiveness of the design and the question
of whether the mark as a whole is merely descriptive of the goods in the application.
We have doubt about that question and resolve that doubt in favor of Applicant. See
In re Berkeley Lights, Inc., No. 88895703, 2022 TTAB LEXIS 382, at *30 (“To be sure,
when the Board has doubt on the issue of descriptiveness, it resolves such doubt in
favor of the applicant.”) (citing In re MBNA Am. Bank, N.A., 340 F.3d 1328,
1336 (Fed. Cir. 2003); In re Zuma Array Ltd., No. 79288888, 2022 TTAB LEXIS 281,
at *10).
For the reasons discussed above, we find that the proposed mark
as a whole is not merely descriptive of the goods identified in
the subject application.19
18 In Swatch, the Board was presented with a composite mark (TOURBILLON & design) that
included a pictorial representation of the goods – i.e., a watch tourbillion. That is not the case
here. Applicant’s design does not pictorially depict the films and labels identified in the
application.
19 We have considered Applicant’s argument that it is inconsistent to refuse registration of
the proposed mark in light of the Office’s allowance of its co-pending applications for similar
composite marks for the same goods, also with disclaimers of BLOCK OUT. See supra
Section I. “[C]onsistency in examination is not itself a substantive rule of trademark law, and
a desire for consistency with the decisions of prior examining attorneys must yield to proper
determinations under the Trademark Act and rules,” In re Korn Ferry, No. 90890949, 2024
TTAB LEXIS 224, at *13 n.13 (internal punctuation and citation omitted). We agree with the
Examining Attorney that Applicant’s co-pending applications, although approved for
publication, are not yet registered, and that we are not bound by the decisions of examining
attorneys in other applications, even decisions of registrability. See, e.g., Cordua, 823 F.3d at
600 (the USPTO must “examine all trademark applications for compliance with each and
every eligibility requirement” regardless of the prior treatment of applications involving

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Decision
The refusal to register the mark is reversed. Because Applicant consented to
entry of a disclaimer of “BLOCK OUT,” the application will proceed to publication in
due course with the disclaimer of record.
similar marks). We reached our decision here based on our evaluation of the mark and record
in this application under the applicable law. The result may promote the Office’s interest in
consistent examination of comparable marks but is not driven by that interest.