Calphalon Corp.

Trademark Trial and Appeal Board

Mar 20, 2017

No. 86356713 (T.T.A.B. Mar. 20, 2017)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: March 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Calphalon Corp.
_____

Serial No. 86356713
_____

Adam S. Weiss, Polsinelli PC,
for Calphalon Corp.

Michael P. Keating, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Wolfson, Heasley, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Calphalon Corp. (“Applicant”) seeks registration on the Principal Register of the
proposed mark SHARPIN, in standard characters,1 for goods identified as “cutlery

1 Applicant amended the drawing of the claimed mark during prosecution to render it as
SharpIN, but for the reasons discussed below, we find that the amendment did not change
the nature of the mark from a standard character mark to a special form mark. See In re Star
Belly Stitcher, Inc., 107 USPQ2d 2059, n.1 (TTAB 2013). Our presentation of the mark in all
uppercase letters reflects the fact that a term registered as a mark in “standard character”
form is not limited to any particular font style, size, or color.
Serial No. 86356713
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knife blocks which incorporate built-in sharpeners that automatically sharpen
knives,” in International Class 21.2
The Trademark Examining Attorney has refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s
mark is merely descriptive of the goods identified in the application. When the
Examining Attorney made the refusal final, Applicant timely appealed and requested
reconsideration, which was denied. The case is fully briefed. We affirm the refusal to
register.
I. Prosecution History and Record on Appeal
Applicant initially applied to register SHARPIN in standard characters for
“cutlery knife blocks and sheaths.” On November 20, 2014, the Examining Attorney
issued a first Office Action requesting clarification of Applicant’s identification of
goods and requiring Applicant to provide information about whether its goods
incorporate, use, or feature devices or items that sharpen knives or other objects.
On May 19, 2015, Applicant responded to the Examining Attorney’s information
request with the statement that “[t]he goods incorporate built in ceramic sharpeners
that automatically sharpen knives every time they are taken out or returned to their
slots as demonstrated by the attached evidence,” and amended its identification of
goods to read “cutlery knife blocks which incorporate built-in sharpeners that

2 Application Serial No. 86356713 was filed on August 4, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the claimed mark in commerce. Applicant amended its application during
prosecution to allege use of its mark and to seek registration under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
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automatically sharpen knives.” The “attached evidence” consisted of what appears to
be a press release describing Applicant’s new line of self-sharpening cutlery to be sold
under the proposed mark, and photographs of the product. The first page of the press
release and the photographs are reproduced below (highlighting supplied by
Applicant):

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On June 3, 2015, the Examining Attorney issued a second Office Action in which
he refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that Applicant’s proposed mark was merely descriptive of
the goods as amended. The Examining Attorney made of record a definition of the
word “sharpen” from The American Heritage Dictionary (www.ahdictionary.com) as
“to make or become sharp or sharper.”
Applicant responded to the second Office Action on December 2, 2015 and
simultaneously filed an Amendment to Allege Use of its mark under Section 1(c) of
the Trademark Act, 15 U.S.C. § 1051(c), supported by a specimen of use consisting of
a photograph of product packaging bearing the mark:

Serial No. 86356713
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In the response, Applicant argued against the refusal of registration and made of
record Registration No. 4670617 of XTRABAKE for paper sheets and liners used for
non-stick baking and wrapping and packaging of food products, namely, silicone
coated paper, and Registration No. 4862448 of RAZORLITE for electric sharpeners
for cutting instruments, namely, knives, scissors, wing wheel blades, wing breakers,
and straight blades. Applicant did not discuss the registrations in its briefs on appeal,
however, and we find that they are not relevant to the issues on appeal.
On December 18, 2015, the Patent and Trademark Office accepted Applicant’s
Amendment to Allege Use and on December 22, 2015, the Examining Attorney issued
a third Office Action making final the refusal of registration under Section 2(e)(1) of
the Trademark Act. The Examining Attorney made of record portions of Applicant’s
website at store.calphalon.com:

Serial No. 86356713
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On June 22, 2016, Applicant filed a Notice of Appeal and simultaneously
requested reconsideration and amendment of the drawing of its mark from SHARPIN
to SharpIN supported by a photograph of its packaging (reproduced below):
Serial No. 86356713
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On July 11, 2016, the Examining Attorney accepted Applicant’s amendment to the
drawing of its mark, but denied Applicant’s request for reconsideration of the final
refusal. The Examining Attorney also made of record additional definitions of the
word “sharpen” from Webster’s New World College Dictionary and Random House
Dictionary as “to make or become sharp or sharper,”3 and pages from the websites at

3 These definitions are found at yourdictionary.com and dictionary.infoplease.com.
Serial No. 86356713
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amazon.com and bakepedia.com that show, describe, or review Applicant’s cutlery
knife blocks. Portions of these webpages are reproduced below:

(amazon.com).
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(amazon.com).

Serial No. 86356713
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(bakepedia.com).
II. Mere Descriptiveness Refusal
The issue on appeal is whether Applicant’s mark, as applied to the identified
goods, is “merely descriptive” within the meaning of Section 2(e)(1) of the Trademark
Act. As noted above, Applicant’s Request for Reconsideration sought amendment of
the drawing of the proposed mark from SHARPIN to SharpIN. The Examining
Attorney accepted the amendment, but still treated the mark as SHARPIN, in
standard characters, throughout his appeal brief. Applicant argues in its reply brief
that the Examining Attorney erred by not entering the mark amendment as a “special
Serial No. 86356713
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form” mark. 11 TTABVUE 5. As a result, Applicant argues, the Examining Attorney
improperly argued on appeal that “SharpIN is in standard characters and thus is the
equivalent to SHARPIN.” 11 TTABVUE 5. Hence, we must initially determine
whether Applicant’s proposed mark should be treated as the special form mark
“SharpIN,” i.e., as limited to this particular combination of upper and lower case
letters, or as the standard character mark “SHARPIN,” i.e., without regard to font
style, size, or color. See Trademark Rule 2.52(a).
A. The Mark is a Standard Character, Not Special Form, Mark
Applicant amended the drawing of its proposed mark in its Request for
Reconsideration. Applicant states in its reply brief that it “contacted the Examining
Attorney before filing its Request for Reconsideration and discussed the amendment
of the mark to SharpIN from SHARPIN.” 11 TTABVUE 6. Applicant maintains that
it summarized the discussion with the Examining Attorney in its Request for
Reconsideration. 11 TTABVUE 6.4 Applicant argues that despite discussing and
approving the amendment, the Examining Attorney disregarded it on appeal, 11
TTABVUE 6, and that “[a]t the very least, it was incumbent upon the Examining
Attorney to seek clarification from the Applicant of its intention to amend to the
special form of SharpIN.” 11 TTABVUE 6-7.

4 The summary reads as follows: “Further to discussions with the Examining Attorney, as an
initial matter, Applicant has made a non-material amendment to the Mark so that it more
clearly reads ‘SharpIN.’ This amendment helps to show the manner in which Applicant is
using the mark and more accurately reflects the emphasis, contrast, and juxtaposition of the
‘Sharp’ and ‘IN’ portions of the Mark. Applicant submits that such an amendment is proper
in that it is not a material alter[]ation of the mark and will not necessitate a re-searching of
the Mark. Applicant discussed the matter with the Examining Attorney and understands
that he agrees that such an amendment is proper and acceptable.” 4 TTABVUE 1.
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Applicant cites Section 807.03(h) of the Trademark Manual of Examining
Procedure (“TMEP”) (January 2017) for the proposition that “the Examining Attorney
must contact the Applicant if the record is unclear whether the submitted drawing
was intended to be a standard character drawing.” 11 TTABVUE 5-6.5 Applicant also
cites Section 807.03(c) of the TMEP, which provides, in pertinent part, that if an
“application contains a standard character claim, but the mark includes a design
element, color, or a claim of a particular style or size of lettering, or other elements
such that the mark does not meet the requirements of 37 C.F.R. § 2.52, then the
examining attorney must: (1) treat the drawing as a special form drawing; (2) require
that the applicant delete the standard character claim from the record; (3) ensure
that the appropriate drawing code is entered into the Trademark database; and (4) if
appropriate, add design search codes.” 11 TTABVUE 6.
We find that the record is not “unclear,” within the meaning of TMEP § 807.03(h),
as to whether the submitted drawing was intended to be a standard character
drawing. We further find that Applicant’s amendment to the drawing of its mark met
the requirements of 37 C.F.R. § 2.52(a), and that the Examining Attorney was not
required to treat the mark as being in special form. Trademark Rule 2.52(a), to which
the cited TMEP section refers, sets forth the following requirements for a standard
character drawing:

5 Section 807.03(h) of the TMEP provides the following example of when such an inquiry
should be made in an application under Section 1 of the Trademark Act: “[C]larification is
needed if the font style used in the mark on the drawing does not match the font style used
on the specimen and there is no standard character claim in the application, or if the
applicant files a paper application in which the mark is printed or written by hand.”
Serial No. 86356713
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(1) The application includes a statement that the mark is
in standard characters and no claim is made to any
particular font style, size, or color; (2) the mark does not
include a design element; (3) all letters and words in the
mark are depicted in Latin characters; (4) all numerals in
the mark are depicted in Roman or Arabic numerals; and
(5) the mark includes only common punctuation or
diacritical marks.
The final rulemaking in which the former term “typed” was replaced with the term
“standard character” in Rule 2.52 explains that “[a] standard character drawing does
not have to display the mark in all upper case letters, but may display the mark in
any font style.” Rules of Practice for Trademark-Related Filings Under the Madrid
Protocol Implementation Act, 68 Fed. Reg. 55748, 55755 (September 26, 2003).
However, regardless of the font style in which the mark is displayed, the United
States Patent and Trademark Office utilizes a standardized typeface for printing a
mark (filed either on paper or via TEAS) in the Official Gazette and on the
registration certificate:
If the applicant files an application on paper that includes
a standard character claim, the applicant may depict the
mark in any font style; may use bold or italicized letters;
and may use both uppercase and lowercase letters, all
uppercase letters, or all lowercase letters, since no claim is
made to any particular font style, size, or color. However,
the USPTO will convert applicant’s depiction of the mark
to a standardized typeface for printing in the Official
Gazette and on the registration certificate. If filing
electronically via the Trademark Electronic Application
System (“TEAS”), the applicant may neither depict the
mark in any particular font style nor use bold or italicized
letters. TEAS will automatically convert any wording
typed into the standard-character field to a standardized
typeface.
Serial No. 86356713
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TMEP Section 807.03(a). (Emphasis in original). Applicant’s amended drawing met
the requirements of Rule 2.52(a) for a standard character drawing because the letters
in its mark continued to be depicted in Latin characters, and the uppercase and
lowercase letters in the drawing are part of the “standard character set that lists
letters, numerals, punctuation marks, and diacritical marks that may be used in a
standard character drawing.” TMEP § 807.03(b).
Moreover, when Applicant requested amendment of the drawing through the
United States Patent and Trademark Office’s TEAS system, Applicant did not select
the special form option and the standard character designation remained the
designation of choice: “The mark consists of standard characters, without any claim
to any particular font style, size or color.” 4 TTABVUE 1. Because Applicant did not
alter its original “standard character” designation and did not choose the special form
option that would have limited its rights to a “particular font style, size, or color,” and
because the applicable requirements for a standard character drawing set forth in
Trademark Rule 2.52 were otherwise satisfied, the Examining Attorney had no
reason to inquire “whether the submitted drawing was intended to be a standard
character drawing,” TMEP § 807.03(h), and properly treated the mark in the
amended drawing as a standard character mark. See Star Belly Stitcher, 107 USPQ2d
at 2059, n.1 (applied-for mark displayed with uppercase and lowercase letters treated
as standard form mark in all uppercase letters). In short, both Applicant’s original
and amended drawing met the requirements for a standard character drawing.
Serial No. 86356713
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Applicant argues more broadly that its “amendment of the mark and argument
presented in the Request for Reconsideration compels amendment to special form.”
11 TTABVUE 7 (citing TMEP § 807.04(b) and decisions referred to therein). We
disagree. The drawing of the mark, as amended, is still in an acceptable form for an
application with a standard character claim. The use of mixed uppercase and
lowercase letters is not inconsistent with such a claim and does not require deletion
of Applicant’s standard character claim in favor of a special form claim. When
Applicant amended its drawing, it claimed that it was requesting “a non-material
amendment to the Mark,” one that was “not a material alter[]ation of the mark and
will not necessitate a re-searching of the Mark.” 4 TTABVUE 1. Implicit in the
Examining Attorney’s acceptance of Applicant’s claim that SharpIN was not a
“material alteration” of SHARPIN was the conclusion that the amended mark
“contain[ed] what is the essence of the original mark” and “create[d] the impression
of being essentially the same mark.” TMEP § 807.14 (citing In re Halcot-Colombier,
105 F.3d 616, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)). While Applicant could have
elected to amend the drawing of its mark to claim it only in a special form, the
amended drawing does not compel such characterization, which was a matter within
the choice of Applicant.
Applicant invites the Board to consider a remand of the application to the
Examining Attorney “for clarification to special form,” although it states that it
“believes that a remand is unnecessary,” 11 TTABVUE 7, n.3, and, notably, Applicant
has not actually requested a remand under Section 1209.04 of the Trademark Board
Serial No. 86356713
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Manual of Procedure.6 As discussed above, we find that there is nothing unclear about
Applicant’s express claim of a standard character mark. The Examining Attorney
properly treated the mark in the amended drawing as a standard character mark
when briefing the appeal. We thus find no basis in the record for a remand.
We also see no basis for a remand in Applicant’s claim, stated in its reply brief,
that it first learned of the Examining Attorney’s treatment of SHARPIN as a
standard character mark in the Examining Attorney’s appeal brief. Applicant argues
that the Office Action denying the Request for Reconsideration “mentions entry of the
substitute drawing and ‘novel spelling,’ but fails to explain that [the Examining
Attorney] was considering the amendment as ‘standard character,’” and that the
“Examining Attorney’s decision to disregard the amendment only became clear in his
Appeal Brief.” 11 TTABVUE 6, n.2. Applicant’s characterization of the Examining
Attorney’s treatment of the amendment is disingenuous. The Examining Attorney
neither disregarded the amendment, since its entry was noted, nor made an
independent or unilateral decision to treat the amended mark as a standard
character mark, since it was Applicant who so characterized it when submitting the
amendment. In the Office Action denying the Request for Reconsideration, the
Examining Attorney stated that “[t]he substitute drawing has been accepted,” but
just a few lines later stated that Applicant “seeks registration of the mark SHARPIN

6 We understand this to mean that Applicant invites us to remand sua sponte to allow the
Examining Attorney to acknowledge that the mark, as depicted in the amended drawing, is
in special form. The Board will remand an application sua sponte if, during an appeal, it
appears to the Board “that an issue not previously raised may render the mark of the
appellant unregistrable,” circumstances not present here. See Trademark Rule 2.142(f)(1), 37
C.F.R. § 2.142(f)(1).
Serial No. 86356713
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for cutlery knife blocks which incorporate built-in sharpeners that automatically
sharpen knives.” 5 TTABVUE 3. The Examining Attorney’s treatment of the applied-
for mark as SHARPIN, not SharpIN, following amendment of the drawing, was
consistent with Applicant’s maintenance of its claim to a standard character mark
when it requested the amendment.
Applicant also points to the Examining Attorney’s reference to the “novel spelling”
of the amended mark in his statement that “the applied for mark is merely a novel
spelling or an intentional misspelling of a descriptive term.” 5 TTABVUE 3. That was
a reference to Applicant’s misspelling of the word “sharpen” in the proposed mark,
not, as Applicant claims, a reference to the amended drawing of the proposed mark
to render it as SharpIN. The Examining Attorney used exactly the same phrase “a
novel spelling or an intentional misspelling” in the December 22, 2015 Office Action
making final the refusal to register, before Applicant first raised the possibility of an
amendment to the drawing of the mark.7 Applicant cannot legitimately claim surprise
about the treatment of its mark as a standard character mark, particularly at this
late stage in the proceedings.
To summarize, Applicant could have sought registration of its proposed mark in a
particular stylized form, both initially when it filed its application and on

7 We also note that the prosecution history for the application in the TSDR public database
includes a June 24, 2016 entry stating “Amendment and Mail Process Complete,” which
reflects the processing of Applicant’s amended drawing. This entry identifies Applicant’s
amended mark as a “Standard Character Mark.” In addition, the “Mark Information” for
Applicant’s mark in the Status portion of the TSDR public database continued to state
“Standard Character Claim: Yes. The mark consists of standard characters without claim to
any particular font style, size, or color.”
Serial No. 86356713
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amendment, but elected instead to seek registration of its proposed mark in standard
characters. Having elected to seek registration of its proposed mark as a standard
character mark, and having offered no persuasive justification for taking a contrary
position for the first time in its reply brief on appeal, Applicant must have the
descriptiveness of the mark assessed without limitation to any particular depiction
of that term.8 Cf. In re Elbaum, 211 USPQ 639, 641 (TTAB 1981) (applicant who
sought registration of its mark CIRCUL+AID in a “typed drawing” (the previous term
for a standard character mark), rather than in a special form drawing, could not
argue on appeal of a Section 2(d) refusal that the + character in its mark “ha[d] any
more significance in terms of size or format than one of the other nine typed
characters.”). We turn now to the issue of mere descriptiveness.
B. The Mark is Merely Descriptive
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a 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 term is “merely
descriptive” within the meaning of § 2(e)(1) if it “immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is

8 A standard character registration provides a registrant with the broadest form of coverage
for the registered mark because such a registration gives the registrant rights in the mark in
block letters as well as in “depictions of the standard character mark regardless of font style,
size, or color.” Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000) (“Registrations with typed drawings are not limited to any
particular rendition of the mark and, in particular, are not limited to the mark as it is used
in commerce.”); In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009)
(“rights associated with a word mark in standard character (or typed) form reside in the
wording and not in any particular display of the word.”).
Serial No. 86356713
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used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). A term need only describe a single feature or
attribute of the goods to be descriptive. Id. (citing In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001)).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978);
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016). “‘The
question is not whether someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey information about them.’”
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-
17 (TTAB 2002)); see also In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213,
1215 (TTAB 2000) (words PSYCHOLOGY PRESS in composite word-and-design
mark were properly required to be disclaimed as merely descriptive of applicant’s
goods because applicant’s identification of goods “expressly states that the series of
non-fiction books upon which applicant uses its mark are ‘in the field of psychology.’”).
The Examining Attorney argues that consumers would perceive the mark
SHARPIN as the equivalent of the word “sharpen” because the two words are spelled
almost identically and are phonetic equivalents; that the word “sharpen” is defined
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in the dictionary entries of record as “to make or become sharp or sharper;” and that
Applicant’s specimen and the webpages in the record indicate that a purpose or
function of its goods, identified as “cutlery knife blocks which incorporate built-in
sharpeners that automatically sharpen knives,” is the sharpening of knives, causing
SHARPIN to “immediately indicate the function and purpose of the goods, i.e. to
sharpen,” and rendering it merely descriptive of the goods. 10 TTABVUE 6-7.
The Examining Attorney argues that SHARPIN is not suggestive because
“[c]onsumers will immediately and directly know the function and purpose of the
goods and do not need to engage in multi-stage reasoning to reach this conclusion.”
10 TTABVUE 7. According to the Examining Attorney, “[f]aced with the term
SHARPIN and knowing that the goods are knife blocks featuring built-in sharpeners
designed to sharpen knives, the relevant consumer will immediately know the
meaning of the mark and will not need to engage in mental gymnastics to reach that
conclusion. Again, the meaning is clear and direct.” 10 TTABVUE 8. In response to
Applicant’s claim, discussed below, that SHARPIN is a “double entendre,” the
Examining Attorney argues that the “mark does not have a double connotation or
multiple meanings at all—rather, the mark immediately, clearly and directly states
the function and purpose of the goods.” 10 TTABVUE 9.
Applicant offers a number of arguments, discussed below, for why its proposed
mark is suggestive and not merely descriptive. Applicant summarizes the test for
distinguishing suggestive marks from merely descriptive terms as follows:
Various tests have been devised to determine whether a
mark is suggestive or descriptive. Many courts, and the
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TTAB, use the “imagination” test, under which a mark is
suggestive if it requires some imagination, thought and
perception to reach a conclusion as to the nature of the
goods or services. Conversely, a mark is descriptive if it
immediately conveys to one seeing or hearing the mark the
thought of the Applicant’s goods or services.
8 TTABVUE 10 (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759 (2d Cir. 1976), Bell South Corp. v. Planum Tech. Corp., 14 USPQ2d
1555, 1556 (TTAB 1988), and Abcor, 200 USPQ at 218.
Applicant argues that imagination is required to determine the nature of the
product and “that the Mark, especially as amended, does not immediately convey a
readily understood meaning to the average purchaser as to the nature of Applicant’s
goods.” 8 TTABVUE 10. Applicant further argues that SHARPIN is an incongruous
mark, 8 TTABVUE 12-13, and a double entendre. 8 TTABVUE 14-17.
Applicant argues that its mark is incongruous because “Applicant has created a
new word—SharpIN—of incongruous meaning that consumers must interpret to
understand.” Applicant argues that its mark is a double entendre because “the Mark
has multiple suggestive meanings that form puns and double ent[]endres–and not
theoretical, as it is precisely the manner in which Applicant actually uses its mark
and promotes such unique commercial impression–and has an incongruous
meaning.” 8 TTABVUE 15. Applicant posits the following “multiple suggestive
meanings” of its mark:
For example, the goods could contain a knife sharpener like
other knife blocks. The goods may not pertain to “knives”
at all, but instead pertain to some other “sharp” product.
The goods could also sharpen knives. The goods could also
contain a built in knife sharpener that would sharpen
knives when placed inside the block. The use of the term
Serial No. 86356713
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could also be a warning such that something is sharp in the
product and to take heed. Or the Mark could suggest that
the user is “sharp” (i.e., intelligent and keen) for placing a
knife “in” the cutlery block. However consumers will view
the term, they certainly will not immediately believe that
SharpIN refers to a cutlery block.
8 TTABVUE 15 (emphasis in original). In Applicant’s reply brief, Applicant claims
more specifically that its mark “has a clear double meaning” inhering in the fact that
“[c]onsumers will understand the mark to refer both to sharpening knives and that a
sharpener is built within the knife block.” 11 TTABVUE 9.
Applicant concludes by arguing that the evidence of record is insufficient to show
mere descriptiveness because it shows “Applicant’s proprietary use of the mark,” 8
TTABVUE 17, and there is no dictionary definition of “sharpin” or “SharpIN.” 8
TTABVUE 18. Applicant also argues that “there is no evidence of record that brand
owners use ‘SHARPIN’ or ‘SHARPEN’ to describe similar goods,” 8 TTABVUE 12,
and that “Applicant’s mark is not in any manner used by competitors to describe their
products and would not preclude competitors from accurately describing their
products in the future.” 8 TTABVUE 13.
Applicant’s statement of the law of descriptiveness reflects a fundamental
misunderstanding. In arguing that a mark is merely descriptive “if it immediately
conveys to one seeing or hearing the mark the thought of the Applicant’s goods or
services,” 8 TTABVUE 10 (emphasis added), and that SHARPIN is not merely
descriptive because it “does not immediately convey a readily understood meaning to
the average purchaser as to the nature of Applicant’s goods,” 8 TTABVUE 10
Serial No. 86356713
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(emphasis added), Applicant misstates the test for descriptiveness.9 As discussed
above, the “question is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question is whether someone who
knows what the goods and services are will understand the mark to convey
information about them.” DuoProSS, 103 USPQ2d at 1757. Applicant’s misstatement
of the test for descriptiveness causes Applicant to focus improperly upon whether a
purchaser would understand its mark to refer to a type of product, 8 TTABVUE 10-
12,10 rather than whether a purchaser who knows that the goods are “cutlery knife
blocks which incorporate built-in sharpeners that automatically sharpen knives”
would understand SHARPIN “to convey information about them.” Id.
Applicant’s argument that it has “created a new word—SharpIN—of incongruous
meaning that consumers must interpret to understand,” 8 TTABVUE 13, is
unavailing. As discussed above, Applicant does not seek registration of its mark in

9 The Board’s 1988 Bell South case cited by Applicant in its discussion of the test for
descriptiveness, 8 TTABVUE 10, held that PHONE FORWARD for automatic telephone call
diverters was not merely descriptive “because the meaning conveyed by applicant’s mark is
not immediate and direct and because there is no evidence of actual use by competitors or a
need to use these words . . .” 14 USPQ2d at 1556. We have since disavowed any requirement
that the examining attorney show use by third parties to prove descriptiveness (or the
position that the lack of third-party use disproves descriptiveness) in light of the Federal
Circuit’s subsequent decisions in Gyulay, Chamber of Commerce, and DuoProSS. See Fat
Boys, 118 USPQ2d at 1514 (citing cases). See also KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone
obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first”)
(citation omitted).
10 Applicant claims, for example, that “consumers seeking to buy a cutlery block would never
ask for a ‘sharpen’ and would never know what a ‘sharpen’ was if advertised in a store;” 8
TTABVUE 10; that “it would take a substantial leap for a consumer to get from the word
‘SharpIN’ (or the word ‘sharpen’ for that matter) to a knife cutlery block containing an
internal sharpening mechanism;” 8 TTABVUE 11; and that a “cutlery knife block is not, in
itself, a ‘sharpin’ or ‘sharpen;’” 8 TTABVUE 12.
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special form, and we must assess whether the standard character mark SHARPIN is
incongruous as applied to “cutlery knife blocks which incorporate built-in sharpeners
that automatically sharpen knives.” For purposes of Section 2(e)(1), incongruity
exists, for example, where a term evokes an immediate association with something
unrelated to the goods or services. See, e.g., In re Tennis in the Round, Inc., 199 USPQ
496 (TTAB 1978). In Tennis in the Round, the Board held that the mark TENNIS IN
THE ROUND was not merely descriptive of the services of providing tennis facilities
in the form of courts and tennis ball machines and offering instruction in tennis. The
Board found that the mark immediately evoked an association with the well-known
phrase “theater in the round” (in which the audience sits on all sides of a central
acting stage), but was incongruous with that association because the applicant’s
“tennis facilities are not in fact at all analogous to those used in a ‘theater-in-the-
round;’ that is, applicant’s facilities do not involve a tennis court in the middle of an
auditorium (or in the middle of an arrangement of stands) with an audience seated
on all sides of the court.” 199 USPQ at 498. See also In re Shutts, 217 USPQ 363, 364
(TTAB 1983) (“SNO-RAKE” for a snow removal hand tool not merely descriptive
because while it evoked raking snow, “the idea of a ‘rake’ or ‘raking’ does indeed sit
strange in terms of application to snow and, at best, is suggestive of a capacity for
gathering up snow with an implement or using an action that hardly fits any of the
common conceptions of ‘rake’ or ‘raking.’”); Borden, Inc. v. Topps Chewing Gum, Inc.,
173 USPQ 447, 447 (TTAB 1972) (finding the mark ICE CREAM incongruous, and
thus registrable, for chewing gum).
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We find that SHARPIN evokes an immediate association with the phonetically-
identical and otherwise virtually-identical word “sharpen,” and there is nothing
incongruous about the use of the word sharpen (or its phonetic equivalent SHARPIN)
to describe the function of goods identified as “cutlery knife blocks which incorporate
built-in sharpeners that automatically sharpen knives.”
With respect to Applicant’s double entendre argument, Applicant’s main brief first
quotes the definition of a double entendre from TMEP Section 1213.05(c), namely,
“‘an expression that has a double connotation or significance as applied to the goods
or services,’” 8 TTABVUE 14, and then offers several different connotations of the
mark. 8 TTABVUE 15. In its reply brief, Applicant pares the list down to two:
“Applicant’s mark SharpIN, when used in conjunction with ‘cutlery blocks,’ has a
clear double meaning when presented. Consumers will understand the mark to refer
both to sharpening knives and that a sharpener is built within the knife block.” 11
TTABVUE 9. Applicant apparently contends that the second proposed meaning is not
descriptive.
“The multiple interpretations that mark an expression a ‘double entendre’ must
be associations that the public would make fairly readily, and must be readily
apparent from the mark itself.” Id. (emphasis in original) (citations omitted). See, e.g.,
In re Tea & Sympathy Inc., 88 USPQ2d 1062, 1064 (TTAB 2008) (the mark THE
FARMACY for retail store services featuring natural herbs and organic products and
for providing integrated health services at retail locations and information about
dietary supplements and nutrition was a double entendre because it was “a play on
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the natural or farm-fresh characteristics of applicant’s herbs and organic products
used for medicinal purposes featured in applicant’s services” that conveyed “a dual
meaning, that of the natural aspect of the goods sold by applicant and of a
pharmacy.”); In re Nat’l Tea Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT
IT found to be a double entendre when used for boneless ham); In re Delaware Punch
Co., 186 USPQ 63 (TTAB 1975) (THE SOFT PUNCH found to be a double entendre
when used for noncarbonated soft drinks); Colonial Stores Inc., 394 F.2d 549, 157
USPQ 382, 384-85 (CCPA 1968) (SUGAR & SPICE not merely descriptive of bakery
products, notwithstanding the descriptive nature of the terms “SUGAR” and
“SPICE,” because it immediately evoked the nursery rhyme “sugar and spice and
everything nice”).
We find that Applicant’s first proposed meaning of SHARPIN—that the mark
refers to “sharpening knives”—is the only readily-apparent meaning conveyed by the
mark in standard character format, and we further find that this meaning is merely
descriptive because it immediately describes a key function of the goods, namely, that
they sharpen knives. Applicant’s mark is not a double entendre because Applicant’s
briefs make it clear that the possible existence of Applicant’s second proposed
meaning of SHARPIN—that “a sharpener is built within the knife block”—inheres in
the presentation of the mark in a special form as SharpIN, and that is not the form
of the mark for which Applicant seeks registration.
In Applicant’s reply brief, Applicant argues that its “amended mark is not
SHARPIN,” that its main brief “is replete with arguments related to the unique and
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distinctive presentation of SharpIN,”11 and that “[n]owhere in the Examining
Attorney’s response is the unique presentation of SharpIN even addressed.” 11
TTABVUE 8. Applicant claims that the Examining Attorney “misaddresses
Applicant’s double entendre argument by maintaining his position that the mark ‘is
in standard characters and spelled in almost identical fashion to the descriptive term
SHARPEN, and is the clear phonetic equivalent of that term,’” and that the
Examining Attorney “completely disregards the fact that Applicant’s goods are
cutlery blocks that contain a built-in sharpener and that the mark SharpIN creates a
double entendre capable of distinction.” 11 TTABVUE 8 (emphasis added).
Applicant distinguishes a decision cited by the Examining Attorney for the
proposition that a double entendre must be well recognized by the public, In re Ethnic
Home Lifestyles Corp., 70 USPQ2d 1156 (TTAB 2003), on the ground that “Applicant’s
mark SharpIN, when used in conjunction with ‘cutlery blocks,’ has a clear double
meaning when presented.” 11 TTABVUE 9. According to Applicant, the “Examining
Attorney’s failure is also highlighted by his mere conclusion that consumers would
perceive SHARPIN as SHARPEN. . . . This conclusion entirely misses the point of the
amendment, which makes the suggested pronunciation even more clear, namely the
inflection between ‘Sharp’ and ‘IN.’ The mark SharpIN does not have the same
pronunciation nor is it simply a mere misspelling of SHARPEN when presented as
amended.” 11 TTABVUE 9-10 (emphasis added).

11 Applicant’s double entendre argument in its opening brief focuses solely on the depiction
of the mark as SharpIN in special form and does not address whether its standard character
mark SHARPIN is a double entendre. 8 TTABVUE 14-17.
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The special form mark SharpIN that Applicant claims has a second, non-
descriptive meaning, and that Applicant claims makes the mark a double entendre,
is not before us. The mark that is before us, SHARPIN in standard character form,
does not readily evoke the alternative meaning claimed by Applicant, in the manner
in which marks such as SUGAR & SPICE and NO BONES ABOUT IT readily evoked
associations with familiar matter from the American English vernacular, and is thus
not a double entendre.
We agree with the Examining Attorney that the evidence of record establishes
that Applicant’s claimed mark SHARPIN is merely descriptive of the identified goods.
The proposed standard character mark SHARPIN is the phonetic equivalent of the
word “sharpen,” which the record shows means “to make or become sharp or sharper.”
The specimen, webpages and packaging in the record show, as Applicant
acknowledges, that a key function of its goods is to make knives sharp or sharper. As
the Examining Attorney states, “the relevant consumer will immediately know the
meaning of the mark and will not need to engage in mental gymnastics to reach that
conclusion [because] the meaning is clear and direct.” 10 TTABVUE 7. We have no
doubt that a consumer who understands the relevant goods to be “cutlery knife blocks
which incorporate built-in sharpeners that automatically sharpen knives” will
understand the SHARPIN mark to convey information about them, DuoProSS, 103
USPQ2d at 1757, namely, that they sharpen knives.
Decision: The refusal to register is affirmed.