7-Eleven, Inc.

Trademark Trial and Appeal Board

Apr 10, 2003

No. 75748010 (T.T.A.B. Apr. 10, 2003)

Mailed: 4/10/03
Paper No. 16
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re 7-Eleven, Inc.
________
Serial No. 75/748,010
_______
Craig S. Fochler, Charles R. Mandly, Jr., Diane G. Elder
and Lindsey D. Barnes of Wildman, Harrold, Allen & Dixon
for 7-Eleven, Inc.
Georgia Ann Carty, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
7-Eleven, Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register SUPER SLURPEE
STRATA as a trademark for “semi-frozen soft drinks.”1 The
Examining Attorney has made final a requirement that
1 Application Serial No. 75/748,010, filed July 12, 1999, based
on an asserted bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/748,010
2
applicant disclaim the word SUPER, and has refused
registration in the absence of such disclaimer.
The appeal has been fully briefed, but an oral hearing
was not requested.
Section 6(a) of the Trademark Act, 15 U.S.C. 1056(a),
provides that the Director may require the applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), prohibits the registration of matter
which, when used on or in connection with the goods of the
applicant, is merely descriptive of them. A term is merely
descriptive if it immediately conveys knowledge of the
ingredients, qualities or characteristics of the goods with
which it is used. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). Further, terms that are
merely laudatory and descriptive of the alleged merit of a
product are regarded as being descriptive. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995).
The Examining Attorney asserts that the term SUPER in
applicant’s mark SUPER SLURPEE STRATA is a laudatory term
which is merely descriptive and must be disclaimed. The
Examining Attorney also asserts that the word SUPER in the
mark “operates to quantify the nature of the applicant’s
goods,” brief, p. 4, and that “the applicant’s soft drink
Ser No. 75/748,010
3
goods are the type of goods that are commonly provided in
optionally sized containers.” Brief, p. 6. The Examining
Attorney has submitted with her brief dictionary
definitions2 of “super” as meaning:
1. An article or a product of superior
size, quality, or grade.
2. Very large, great, or extreme.
3. Excellent; first-rate.
Applicant relies heavily on In re Ralston Purina Co.,
191 USPQ 237 (TTAB 1976) in which the Board found that the
term SUPER in the mark RALSTON SUPER SLUSH was not merely
descriptive and did not need to be disclaimed. Applicant
also points to two registrations it owns, for SUPER BIG
GULP for “soft drinks for consumption on or off the
2 The American Heritage Dictionary of the English Language, 3d
ed © 1992. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
In its reply brief applicant, referring to these dictionary
definitions, notes that the Examining Attorney, in discussing the
definitions, makes the statement, “SUPER [has] laudatory
connotations in both the noun and adjective form,” quoting p. 2
of the Examining Attorney’s brief. Applicant then focuses on the
Examining Attorney’s use of the word “connotation,” for which
applicant has submitted a dictionary definition of “The
suggesting of a meaning by a word apart from the thing it
explicitly names or describes” to argue that the fact that
“connotation” suggests a meaning shows that the word SUPER is
suggestive. This argument is mere sophistry. To be clear,
however, we explicitly state that we regard the dictionary
definitions of “super” to be the meanings of the word, and not to
show that “super” is only suggestive of those meanings.
Ser No. 75/748,010
4
premises”3 and SUPER BIG BITE for “sandwiches, namely hot
dogs and buns,”4 which registered without a disclaimer of
SUPER. Applicant has also argued that, because it owns a
registration for SUPER SLURPEE for “flavored semi-frozen
carbonated soft drinks for consumption on or off the
premises,”5 the Examining Attorney’s present requirement for
a disclaimer of SUPER is in the nature of a collateral
attack on applicant’s prior incontestable registration, and
is precluded under the principles enunciated in In re
American Sail Training Association, 230 USPQ 879 (TTAB
1986).
Looking to case law and past practice of the Office,
the word SUPER has been found to be, in different contexts,
either a suggestive word (and therefore eligible for
inclusion as an undisclaimed element of a mark, or a
descriptive word, and therefore a word which must be
disclaimed or, if the only feature of a mark, ineligible
for registration. In some registrations, the word SUPER is
disclaimed; in others, it is not.6 The same discrepancy
3 Registration No. 1,470,871.
4 Registration No. 1,721,151.
5 Registration No. 1,647,002.
6 Thus, we give little weight to applicant’s ownership of
registrations for SUPER BIG GULP and SUPER BIG BITE, which issued
without disclaimer of the word SUPER. As applicant itself has
stated throughout the prosecution of the application and briefing
of this appeal, “prior decisions respecting the registerabilty of
other marks do not bind the Office when determining the
Ser No. 75/748,010
5
appears in published decisions, as the cases cited by
applicant and the Examining Attorney show. See, for
example, the cases reviewed in In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047 (TTAB 2002), including Quaker State
Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172
USPQ 361, 363 (CCPA 1972) [SUPER BLEND held merely
descriptive of motor oils as designating “an allegedly
superior blend of oils”]; In re Consolidated Cigar
Co.,supra at 1293-94 [SUPER BUY found laudatory and hence
merely descriptive of cigars, pipe tobacco, chewing tobacco
and snuff inasmuch as term “ascribes a quality of superior
value to the goods,” in that they “are an exceptionally
high value for their price,” and is “an expression of pre-
eminence, analogous to a grade designation”]; In re Carter-
Wallace, Inc., 222 USPQ 729, 730 (TTAB 1984) [SUPER GEL
held merely descriptive of a lathering gel for shaving
because term “would be perceived as nothing more than the
name of the goods modified by a laudatory adjective
indicating the superior quality of applicant's shaving
gel”]; In re Samuel Moore & Co., 195 USPQ 241 (TTAB 1977)
[SUPERHOSE! found merely descriptive of hydraulic hose made
registerability of the mark for which registration is sought,”
Brief, p. 6, and “each case must be determined on its own merits
and the cited [registrations] are entitled to little or no
weight”, reply brief, p. 4.
Ser No. 75/748,010
6
of synthetic resinous materials inasumuch as term “would be
understood as the name of the goods modified by a laudatory
adjective which would be taken to mean that applicant’s
hose is of superior quality or strength”]; In re Allen
Electric & Equipment Co., 175 USPQ 176, 177 [SUPER
COLLINEAR found neither descriptive nor misdescriptive of
base station communication antennas inasmuch as “an antenna
is either collinear or it is not” and thus “one antenna is
not more collinear or it is not” and thus “one antenna is
not more collinear than another nor would it be
comparatvely, most collinear of three or more such arrays;
and In re Occidental Petroleum Corp.¸167 USPQ 128 (TTAB
1970) [SUPER IRON held suggestive of soil supplements
because “it takes some roundabout reasoning to make a
determination...that the product contains a larger amount
of iron than most soil supplements or that this
iron...ingredient...is superior in quality to iron found in
other soil supplements”].
What is clear, after reviewing the various cases and
third-party registrations, is that the question of whether
the term SUPER is merely descriptive or is suggestive must
be determined on a case-by-case basis, considering the
marks, the goods, and the evidence of the particular
record.
Ser No. 75/748,010
7
In this case, we find that SUPER is merely
descriptive, and must be disclaimed. First, and most
importantly, we note that applicant, in its prior
registration for SUPER SLURPEE, disclaimed exclusive rights
to the word SUPER.7 This disclaimer is an acknowledgement
by applicant of the descriptiveness of SUPER for its soft
drink product.8 See Quaker State Oil Refining Corporation
v. Quaker Oil Corporation, supra, (when appellant
disclaimed the term in applications for registrations of
compound marks, it admitted the merely descriptive nature
of the mark). Further, applicant has essentially admitted
in its reply brief that the word is merely descriptive for
these goods by its claim that “‘super’ has presumptively
acquired distinctiveness through more than fifteen years of
continuous use.” Reply brief, p. 4. Only a term which was
initially merely descriptive would acquire distinctiveness;
otherwise it would be inherently distinctive.9
7 In view of this disclaimer, applicant’s argument that the
Examining Attorney’s requirement for a disclaimer of SUPER in its
present mark represents a collateral attack on the prior
registration must fail.
8 We point out that this registration issued on June 4, 1991, at
a point when a disclaimer of matter which was arbitrary or
otherwise registrable was not accepted. This policy, as it
applied to voluntary disclaimers, was changed in In re MCI
Communications Corp., 21 USPQ2d 1534 (Comr. Pats. 1991).
9 If applicant believes that the word SUPER in the mark SUPER
SLURPEE STRATA has acquired distinctiveness as a result of its
use of the mark SUPER SLURPEE, applicant would, of course, be
Ser No. 75/748,010
8
Further, we find that applicant’s reliance on In re
Ralston Purina Company, 191 USPQ 237 (TTAB 1976) is
inapposite. In that case, the Board reversed the Examining
Attorney’s requirement that applicant disclaim the word
SUPER in the mark RALSTON SUPER SLUSH (SLUSH disclaimed),
for a concentrate for making a slush type soft drink. The
Board stated, at p. 238, that, in the context of “modern
day advertising where [the term] is used as mere puffery
and product manufacturers use it, not to describe size or
other attributes of the product, but merely to connote a
vague desirable characteristic or quality allegedly
connected with the product,” it is not merely descriptive.
[emphasis added]. Applicant asserts that, as in Ralston
Purina, the term SUPER in SUPER SLURPEE STRATA for semi-
frozen soft drinks is also mere puffery. However, the
Ralston Purina decision specifically recognized that the
word SUPER would be merely descriptive if it is used “to
describe size” of the product. In this respect, the word
SUPER in SUPER SLURPEE STRATA is also merely descriptive.
It is common knowledge, and therefore a fact of which we
can take judicial notice, that drinks such as applicant’s
identified “semi-frozen soft drinks” come in a variety of
free to file an application for SUPER SLURPEE STRATA claiming
acquired distinctiveness with respect to this term.
Ser No. 75/748,010
9
sizes. The dictionary definitions of “super” show that
“super” means a product of superior size. Consumers would,
thus, immediately recognize, upon seeing the mark SUPER
SLURPEE STRATA for such beverages, that SUPER describes a
drink that comes in a very large size.10 The fact that
applicant also owns a registration for SLURPEE STRATA for
semi-frozen soft drinks11 (as well as registrations for both
SLURPEE12 and SUPER SLURPEE13 for flavored semi-frozen soft
drinks) reinforces this understanding. Thus, we are not
persuaded by applicant’s argument that “there is neither
evidence of record, nor, indeed, basis in fact, for the
Trademark Examining Attorney’s bald assertion that ‘super’
10 We note that, at footnote one of applicant’s reply brief, it
objects to the Examining Attorney’s argument that SUPER “operates
to quantify the nature of applicant’s goods,” stating that this
assertion was not previously made and therefore should be
disregarded, citing Trademark Rule 2.142(d). Applicant is
advised that Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of an
appeal, and that the Board ordinarily will not consider
additional evidence filed with the Board after an appeal is
filed. A new argument is not evidence, and raising an argument
for the first time does not contravene the provisions of this
rule. Moreover, even if the Examining Attorney had not raised
the argument that SUPER describes the size of the soft drink, the
Board could still make such a finding. As long as the applicant
has been properly apprised of the basis for the requirement or
refusal (in this case that SUPER must be disclaimed because it is
unregistrable under the provisions of Section 2(e)(1) of the
Act), the Board is not required to adopt the Examining Attorney’s
reasoning or arguments in support of that refusal, but can affirm
the requirement or refusal based on the Board’s review of the
evidence, case law, etc.
11 Registration No. 2,265,759.
12 Registration No. 829,177.
13 Registration No. 1,647,002.
Ser No. 75/748,010
10
‘operates to quantify the nature of applicant’s goods.’”
Reply brief, p. 3.
Applicant also argues that “one is at a loss to
understand how one could ‘quantify’ the SLURPEEness of 7-
Eleven’s product with the term ‘super’.” Reply brief, p.
3. This argument is simply disingenuous. As stated above,
SUPER quantifies applicant’s SUPER SLURPEE STRATA soft
drinks by describing that they are a larger or super-size
version of applicant’s SLURPEE STRATA soft drinks.
Decision: The requirement for a disclaimer is
affirmed, and registration in the absence of such
disclaimer is accordingly affirmed. However, if applicant
submits the required disclaimer within thirty days of the
mailing date of this decision, the decision will be set
aside, and the application approved for publication.