Calidad Holdings Pty Ltd

Trademark Trial and Appeal Board

May 28, 1999

No. 75046615 (T.T.A.B. May. 28, 1999)

Paper No. 10
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Calidad Holdings Pty Ltd
________
Serial No. 75/046,615
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Stephanie K. Wade of Dickinson, Wright, Moon, Van Dusen & Freeman
for Calidad Holdings Pty Ltd.
Raul F. Cordova, Trademark Examining Attorney, Law Office 108,
(David Shallant, Managing Attorney).
_______
Before Hohein, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Calidad Holdings Pty Ltd has filed an application to
register the term "CALIDAD" as a trademark for "toner for laser
printers; [and] ink jet cartridges and ink jet cartridge refills
for printers" in International Class 2 and "inked ribbons for
typewriters, printers, cash registers and adding machines" in
International Class 16.1 Applicant states in the application
that: "The English translation of the word ’calidad’ is
’quality.’"
Ser. No. 75/046,615
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, "CALIDAD"
is a laudatory term and, thus, is merely descriptive of them.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,

1 Ser. No. 75/046,615, filed on January 22, 1996, which is based upon
an asserted bona fide intention to use.
2 Applicant, with its appeal brief, has submitted "printouts ... from
the Patent and Trademark Office CD-ROM" of what it characterizes as
the "two most recently issued registrations containing the word
CALIDAD [which] issued on the Principal Register without a disclaimer
of the word CALIDAD and without resort to Section 2(f)" of the
Trademark Act, 15 U.S.C. §1052(f). According to applicant, "these
registrations ... represent the Trademark Office's prevailing view ...
not [to] treat the word CALIDAD as laudatory and [hence merely]
descriptive." While we note that the submission of such evidence at
this stage is ordinarily considered to be untimely under Trademark
Rule 2.142(d), the Examining Attorney in his brief has considered the
evidence "and[,] to complete the record and rebut applicant's
contention concerning Office practice as to the treatment of the term
CALIDAD, ... [has] attached to this appeal brief [three] recently
issued third[-]party registrations of trademarks containing the term
CALIDAD where the term ... is either disclaimed or the registration
was issued under Trademark Act Section 2(f)". Inasmuch as applicant
has raised no objection to consideration of such evidence, even
thought it is likewise untimely under Trademark Rule 2.142(d), we have
treated the third-party registrations furnished by applicant and the
Examining Attorney as forming part of the record in this appeal for
whatever probative value such evidence may have. See, e.g., In re
Consolidated Cigar Co., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 4.
Moreover, and in any event, each case must be decided on its own
merits and, while uniform treatment under the Trademark Act is
desirable, a merely descriptive term is not made registrable simply
because other similar (or arguably so) marks appear on the register.
Id. at 1295.
Ser. No. 75/046,615
3
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
aspect about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in relation to
the goods or services for which registration is sought, the
context in which it is being used or is to be used in connection
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or
services because of the manner of its use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Classified within the category of merely descriptive
designations set forth above are those which Professor McCarthy
refers to as "self-laudatory terms". As explained in 2 J.
McCarthy, McCarthy on Trademarks & Unfair Competition §11.17 (4th
ed. 1999) (footnotes omitted):
Marks that are merely "laudatory" and
descriptive of the alleged merit of a product
are also regarded as being "descriptive."
This includes such terms as ... PREFERRED,
DELUXE, GOLD MEDAL, BLUE RIBBON, SUPER BUY,
and the like.
Since each tangible product carries with
it a "psychic load" of intangible consumer
psychological expectations about the product,
a mark could be "descriptive" of the product
itself or those intangible expectations, or
both. Self-laudatory or "puffing" marks are
regarded as a condensed form of describing
the character or quality of the goods. ....
Ser. No. 75/046,615
4
Furthermore, whether a term is laudatory or otherwise merely
descriptive, it is well established that the foreign equivalent
of such a term generally is itself merely descriptive and thus is
no more registrable than the English word would be. See, e.g.,
In re Optima International, 196 USPQ 775, 777 (TTAB 1977) and
cases cited therein.
Applicant argues, however, that the fact that the term
"CALIDAD" can be translated as meaning "QUALITY" does not mean
that "consumers are capable of translating it or, if capable,
that CALIDAD is a word that would be translated by consumers."
Citing In re Tia Maria, Inc., 188 USPQ 524, 525 (TTAB 1975),
applicant maintains that, as stated therein, "there are foreign
expression that even those familiar with the language will not
translate, accepting the term as it is ...." Likewise, in this
case, applicant asserts its belief that consumers would not
translate the term CALIDAD and would, as in Tia Maria, just
accept the term as it is.
The Examining Attorney, on the other hand, points out
that, on this record, there is nothing which indicates that the
term "CALIDAD" would have any other significance than its
acknowledged meaning of "QUALITY". Specifically, the Examining
Attorney observes that, "[i]n the filing of the application,
applicant offered a proper translation of CALIDAD" as meaning
"QUALITY" and argues that applicant cannot, "at this stage,
collaterally attack the meaning" of its own definition. We agree
with the Examining Attorney that, unlike the case relied upon by
applicant, in which the Board held that circumstances in the
Ser. No. 75/046,615
5
marketplace were such that the mark "TIA MARIA" for restaurant
services would not be literally translated by Spanish speakers as
"AUNT MARY" and thus be likely to cause confusion with the mark
"AUNT MARY’S" for canned fruits and canned vegetables, there is
nothing to substantiate applicant’s belief that those who are
acquainted with or fluent in the Spanish language would not
translate the term "CALIDAD" into its English equivalent of
"QUALITY". To the contrary, we judicially notice3 in this
respect that Cassell’s Spanish-English English-Spanish Dictionary
(1978) at 125 and 946 respectively lists "calidad" as solely
meaning "quality" and vice versa. We see no reason, therefore,
for consumers, including in particular the large number of
Spanish-speaking persons in the United States, to accept the term
"CALIDAD" "as it is" instead of regarding it as signifying its
English equivalent of "QUALITY".
In view thereof, we also concur with the Examining
Attorney that the term "CALIDAD" "represents a self-laudatory
attribute" of applicant’s goods in that "it serves to call
attention to the ... superiority of the ... goods". Citing, in
particular, the definition of the word "quality," which The
American Heritage Dictionary of the English Language (2d coll.
ed.) at 1013 sets forth as meaning, in pertinent part, "3. a.
Superiority of kind: an intellect of unquestioned quality. b.
Degree or grade of excellence: yard goods of low quality," the

3 Judicial notice may properly be taken of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/046,615
6
Examining Attorney persuasively contends that "applicant’s use of
the term CALIDAD on its goods is clearly intended to denote that
the goods are of a superior kind and represent a degree of
excellence." Plainly, such term forthwith conveys, without
conjecture or speculation, that applicant’s "laser printer toner,
ink jet cartridges and refills, and inked ribbons are quality
products.
We find, therefore, that the term "CALIDAD," when used
in connection with applicant’s goods, is laudatory and merely
descriptive of such products because it directly indicates a
desirable trait thereof, namely, their asserted excellence. As
stated by the Board in In re Erwin, 1 USPQ2d 1665, 1667 (TTAB
1986): "The long and short of it is that common and laudatory
terms of this character must remain available for the trade and
competitive use to which they are so relentlessly put and, at
least in the absence of demonstrated secondary meaning, cannot be
accepted as registrable under the Trademark Act."4 Competitors
of applicant, especially those seeking to market their laser
printer toner, ink jet cartridges and refills, and inked ribbons
to Spanish-speaking consumers in the United States, would plainly
need to utilize the term "CALIDAD" to tout their goods as quality
products. See, e.g., In re San Miguel Corp., 229 USPQ 617, 618
(TTAB 1986) [term "SELECTA," being Spanish equivalent of the word

4 As to the marks in the two third-party registrations referred to by
applicant, we note that we disagree with applicant that such evidence,
particularly in light of the marks in the third-party registrations
relied upon by the Examining Attorney, establishes a pattern or policy
by the Patent and Trademark Office of treating the term "CALIDAD" as
suggestive rather than descriptive of the identified goods.
Ser. No. 75/046,615
7
"SELECT," is merely laudatorily descriptive of beer because, as
commonly used in the trade, it designates that such product "is a
superior or premium beer"].
Decision: The refusal under Section 2(e)(1) is
affirmed.
G. D. Hohein
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board