Summary
stating that "descriptiveness alone does not necessarily preclude registration on the Supplemental Register. 15 U.S.C. § 1091."
Summary of this case from In re Bush Bros. Co.Opinion
Appeal No. 77-572.
November 17, 1977.
Burton L. Lilling, Frank P. Presta, Arlington, Va. (Jacobi, Lilling Siegel, Arlington, Va.), attorneys of record, for appellant.
Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Fred E. McKelvey, Washington, D.C., of counsel.
Appeal from the Patent and Trademark Office Trademark Trial and Appeal Board.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) affirming the refusal of the examiner to register appellant's mark on the Supplemental Register ( 15 U.S.C. § 1091). We reverse.
The mark is the stylized lettering of "balsam" for hair conditioner and hair shampoo shown below. (Appellant has disclaimed the term "balsam" itself.)
The sole issue whether the mark is capable of indicating origin of appellant's goods to an ordinary purchaser and whether appellant's mark was intended primarily for that purpose. In re Minnesota Mining Manufacturing Co., 335 F.2d 836, 51 CCPA 1546, 142 USPQ 366 (1964).
Citing In re Rubinstein, 410 F.2d 438, 56 CCPA 1110, 161 USPQ 606 (1969), the Solicitor argues that "appellant's stylized term . . . serves to descriptively identify the nature of the goods and not their source." However, descriptiveness is irrelevant, since the term has been disclaimed. Moreover, descriptiveness alone does not necessarily preclude registration on the Supplemental Register. 15 U.S.C. § 1091.
The Solicitor's argument that "balsam" is generic falls for the same reason.
Although the only exhibit of the mark shows its use on a bottle in association with appellant's well-known house mark "WELLA," this does not preclude the mark from having a capability of indicating origin of appellant's goods. Such a capability is clear from the evidence of registered marks in which the term "BALSAM" appears in lettering not even approaching the unique style of appellant's mark. With respect to appellant's primary intention that the mark indicate origin of its goods, we are satisfied that such intent is supported by the record, and the PTO has produced nothing to rebut it. See In re Minnesota Mining Manufacturing Co., supra.
Appellant argues that various letters (of record) from competitors indicating their discontinuance of use of its mark upon threat of legal action are evidence of its distinctiveness, but we agree with the TTAB that such evidence shows a desire of competitors to avoid litigation rather than distinctiveness of the mark.
In view of the foregoing, we hold that appellant's mark is capable of indicating origin of appellant's goods and that the mark was intended primarily for that purpose.
The decision of the TTAB is reversed.
REVERSED.