Coinmach Corp.

Trademark Trial and Appeal Board

Nov 21, 2002

No. 75468157 (T.T.A.B. Nov. 21, 2002)

Mailed: November 21, 2002
Paper No. 16
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Coinmach Corporation
________
Serial No. 75/468,1571
_______
Joan L. Long of Mayer, Brown, Rowe & Maw for Coinmach
Corporation.
Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On April 15, 1998, Coinmach Corporation filed an
application to register the mark SUPER LAUNDRY on the
Principal Register for services ultimately identified as
follows:
1 Applicant has repeatedly utilized an incorrect application
serial number in its papers filed herein when referencing this
application. The correct number is application Serial No.
75/468,157.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/468157
2
“retail distributorship featuring
laundry equipment” in International
Class 35; and
“construction services, namely,
planning, laying out and custom
construction of laundry retail stores;
maintenance and repair of laundry
equipment” in International Class 37.2
Citing Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), the Examining Attorney has finally refused
registration for both classes of services on the ground
that when applicant’s mark SUPER LAUNDRY is used in
connection with the services identified in the application,
it is merely descriptive thereof.
When the refusal was made final, applicant appealed to
this Board as to both classes. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
As a preliminary matter, we note that in its reply
brief applicant argued that its mark has been in continuous
use for over six years (since 1995); that prima facie
evidence of acquired distinctiveness under Section 2(f) of
the Trademark Act is substantially exclusive and continuous
use for five years; and that “it would be ironic and
2 The application is based on applicant’s claimed date of first
use and first use in commerce of November 22, 1995, for both
classes of services.
Ser. No. 75/468157
3
contrary to the purpose of 2(f) to refuse registration of
SUPER LAUNDRY based on a ‘close call’ on how distinctive
the mark is, when it qualifies as a presumptively
distinctive [mark] under the Act” (reply brief, unnumbered
p. 5).
To clarify the record and the issue before this Board,
we note that applicant has never requested registration
under Section 2(f) and, in fact, applicant has not stated
it has substantially exclusive use. If applicant intended
the comments in its reply brief to be a request for
registration under Section 2(f), it is untimely to raise
such matter in the reply brief on appeal. See Trademark
Rule 2.142(d). See also, TBMP §1215. The only issue
before the Board is whether the phrase “SUPER LAUNDRY” is
merely descriptive or inherently distinctive of the
identified services.3
The test for determining whether a term or phrase is
merely descriptive under Section 2(e)(1) of the Trademark
Act is whether the term or phrase immediately conveys
information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
3 Even if applicant were able to show that its mark had acquired
distinctiveness as the result of substantially exclusive and
continuous use in commerce, this would have no impact on the
question of whether the mark is inherently distinctive.
Ser. No. 75/468157
4
of the product or service on or in connection with which it
is used. See In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978); In re Venture Associates, 226
USPQ 285 (TTAB 1985); and In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979). The determination of mere
descriptiveness must be made, not in the abstract, but
rather in relation to the goods or services for which
registration is sought, the context in which the term or
phrase is being used on or in connection with those goods
or services, and the impact that it is likely to make on
the average purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Thus, 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 or services are will understand the mark as
directly conveying information about them. See In re Home
Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990); and In re American Greetings Corp., 226 USPQ 365
(TTAB 1985).
The Examining Attorney argues that the word “super”
refers to large size or superior quality, and the term
“laundry” refers to a commercial establishment for
Ser. No. 75/468157
5
laundering clothes or linens; that the term “super” is
laudatory, nondistinctive and unregistrable absent proof of
acquired distinctiveness; that the word “laundry” is
generic with respect to applicant’s services, or at the
very least it names the principal component or feature of
both of applicant’s identified services; that the phrase
resulting from combining these two common English terms
merely describes a significant feature of the involved
services, specifically, that applicant constructs laundry
retail stores, maintains and repairs laundry equipment, and
provides retail distributorships featuring laundry
equipment; and that the third-party registrations made of
record by applicant4 are not persuasive of a different
result.
4 The Examining Attorney contends that applicant made only five
such registrations of record, three of which include a disclaimer
of at least the word “super.” Applicant contends that it cited
21 registrations in its response filed July 13, 1999, and
submitted actual copies of five of those 21 registrations. In
the final Office action, the Examining Attorney did not explain
that a typed list is insufficient to make registrations of
record, In re Duofold, Inc., 184 USPQ 638 (TTAB 1974); and
instead, the Examining Attorney discussed nine registrations on
the merits. Therefore, the Examining Attorney waived his
objection to applicant’s submission of a typed list of third-
party registrations. (We also note that page 7 of applicant’s
July 13, 1999 response, which is a full page referring to third-
party registrations, was missing from the record, and presumably
was missing at the time the Examining Attorney examined this
application. While the Examining Attorney did not notice and/or
did not request a copy of the missing page, the Board has so
requested and received a copy of that page.) Thus, in addition
to the five registrations for which applicant provided actual
Ser. No. 75/468157
6
In support of his refusal to register, the Examining
Attorney submitted (i) dictionary definitions of the terms
“super” and “laundry”; (ii) photocopies of several stories
retrieved from the Nexis database relating to “super
laundry(ies)”; and (iii) photocopies of certain pages from
various websites on the Internet, again relating to “super
laundry(ies).”
The definitions from The American Heritage Dictionary
of the English Language (Third edition 1992) are as
follows:
(1) super (adjective) 1. Very large,
great, or extreme: “yet another
super Skyscraper” (Dylan Thomas).
2. Excellent; first-rate: a super
party; and
(2) laundry (noun) (plural laundries)
2.a. A commercial establishment
for laundering clothes or linens.
copies, we have considered the listing of 16 registrations on
pages 7-8 of applicant’s response filed July 13, 1999.
Also, in applicant’s request for reconsideration, filed January
5, 2001, it again presented a typed list of 15 third-party
registrations, none of which include a disclaimer of the term
“super” (many of which are the same as those previously
discussed). This typed listing refers to Exhibits A-C, which
exhibits presumably consist of actual copies of those 15 third-
party registrations. These exhibits are not in the application
file. The Board was unable to obtain copies thereof from
applicant’s attorneys, and it is unclear if the exhibits were
ever actually filed with the USPTO. In any event, the actual
copies of third-party registrations are not in the record and
thus the exhibits themselves cannot be considered. However, the
typed list of these 15 registrations provided in the body of
applicant’s request for reconsideration will be treated as of
record because applicant presumably relied on the Examining
Attorney’s acceptance of a list of registrations in the prior
Office action.
Ser. No. 75/468157
7
The following stories retrieved from the Nexis
database show use of the term “super laundry(ies)”
(emphasis added):
Headline: Florida Executives Plan to
Revolutionize Coin Laundry Business
From garbage to videos, H. Wayne
Huizenga built a multibillion-dollar
empire by taking over industries once
dominated by mom-and-pop operators and
building them into household names.
After watching the master in action,
two groups of former Blockbuster
Entertainment and Republic Industries
executives see another opportunity to
put his philosophy into action—coin
laundries. They hope to pepper the
country with super laundries called
Laundromax and SpinCycle.
... The average store will be 4,500-
square-feet, about twice the size of
the neighborhood coin laundry with
more room for everything from washers
to folding stations. The big pluses
are the amenities such as air
conditioning, television sets, snacks
and kids’ games. ...
“The Miami Herald,” February 5,
1998;
Sub Headline: Super Laundries on Way
Two former Republic Industries
executives said they’ve raised $7
million from private investors to
start a chain of coin-laundry
superstores under the Laundromax name.
“The Sun-Sentinel (Fort Lauderdale,
FL),” January 21, 1998; and
Ser. No. 75/468157
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Headline: Obituary-Businessman Frank
Okamura, 89
It is a little-known footnote to the
history of Seattle, but when the Grand
Union’s Laundry was in its heyday, it
was one of the biggest Japanese-owned
businesses in the country.
... Mr. Okamura worked in the family
business for more than 30 years, and
had visions of building a “super
laundry” across from the Grand Union.
“The Seattle Times,” October 20, 1992.
The Internet websites show the following uses of
“super laundry”:
“What’s Up?”...Oklahoma City!
Video Rental
General Listings
...
Super Laundry & Video Rental, 3345 NW
23rd St.,..., “www.whatsupok.com”
October 17, 2000; and
Speed Queen Success Story
Super Suds Laundry Solution
... At Super Suds Laundry in Denison,
Texas they furnish a 1/4 cup along
side every washer. ... Super Suds uses
all Speed Queen MoneyMaster
frontloading washers... The store
boasts a play area for children with
their own VCR and TV... Super Laundry
is an all MoneyMaster Store....,
“www.speedqueen.com,” October 17,
2000.5
5 Applicant contends that the use of “super laundry” in the Speed
Queen Internet website is either a typographical error because
the remainder of the uses shown therein are “Super Suds Laundry,”
and/or it is an infringer of applicant’s mark. There is no
evidence to support applicant’s theory, and we must therefore
consider the text as it appears.
Ser. No. 75/468157
9
Finally, the Examining Attorney refers to the
specimens submitted by applicant, which include the
following statements:
For over 30 years, Super Laundry has
offered unequaled leadership and
service to thousands of satisfied
coin-op owners. Our success in
turning dirty laundry into tidy
profits for clients has made us the
largest laundry service company in the
nation.
...
You can count on Super for quality and
attention to detail right down the
line. We sell only the best, most
dependable, laundry equipment
available.
...
When you choose Super, you’re choosing
the “Smart Laundromat System.”
Computer Design...Plan To Succeed with
Super Laundry’s Exclusive Computer
Design System. ... National
Distributors of Commercial Laundry
Equipment...
Applicant urges reversal of the refusal to register,
arguing that it does not use the phrase in connection with
a commercial laundry service, but rather in connection with
distributorship, construction and repair services; that
applicant’s submission of third-party registrations
reflects a determination that the term “super” is
suggestive, not descriptive; and that there is no rational
basis for distinguishing between those third-party
registrations and applicant’s mark. Applicant specifically
Ser. No. 75/468157
10
argues that the phrase “SUPER LAUNDRY” is not merely
descriptive under any of the tests for mere descriptiveness
– the dictionary test (“super” is suggestive as it is used
as mere puffery and not to describe size or other desirable
characteristics of a product or service, and applicant does
not sell “laundry” services); the imagination test (the
combination of the two common English words results in the
creation of an uncommon term which requires imagination or
thought to conclude something about the involved services);
the competitor’s need test (competitors would not need to
use the term in describing their own goods or services);
and the competitor’s use test (the asserted lack of
evidence that others use the term “super laundry” to
describe the services involved herein).
As has often been stated, there is a thin line of
demarcation between a suggestive mark and a merely
descriptive one, with the determination of which category a
mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. See e.g.,
In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992); and In re
TMS Corporation of the Americas, 200 USPQ 57 (TTAB 1978).
See also, In re George Weston Limited, 228 USPQ 57 (TTAB
1985). Thus, it is not surprising that different results
have been reached in cases involving the term “super.” See
Ser. No. 75/468157
11
Quaker State Oil Refining Corporation v. Quaker Oil
Corporation, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972)(SUPER
BLEND held merely descriptive of motor oils); In re
Consolidated Cigar Co., supra (SUPER BUY held merely
descriptive of cigars, pipe tobacco, chewing tobacco and
snuff); In re United States Steel Corporation, 225 USPQ 750
(TTAB 1985)(SUPEROPE held merely descriptive of wire rope);
In re Carter-Wallace, Inc., 222 USPQ 729 (TTAB 1984)(SUPER
GEL held merely descriptive of lathering gel for shaving);
In re Samuel Moore & Company, 195 USPQ 237 (TTAB
1977)(SUPERHOSE held merely descriptive of hydraulic hose);
and conversely, In re Ralston Purina Company, 191 USPQ 237
(TTAB 1976) (RALSTON SUPER SLUSH with “SLUSH” disclaimed,
held suggestive of a concentrate to make a slush type soft
drink); and In re Occidental Petroleum Corporation, 167
USPQ 128 (TTAB 1970) (SUPER IRON held suggestive of soil
supplements).
We agree with the Examining Attorney that the phrase
SUPER LAUNDRY immediately and directly conveys information
about a significant feature or characteristic of both
applicant’s retail distributorship services and its
construction (planning, layout and custom construction) and
maintenance/repair services. A laundry, in the context of
this case, is a physical place, and certainly “super
Ser. No. 75/468157
12
laundry” is merely descriptive of a large laundry facility,
or one offering lots of “extras.” While applicant does not
sell laundry services, there is no question that all of
applicant’s identified services are tangential services
which are closely related to the laundry facility itself.
Specifically, applicant plans and constructs laundry
facilities; offers retail distributorships of laundry
facilities; and maintains and repairs laundry equipment.
The relevant purchasing public, viewing the mark in
connection with such services, would immediately recognize
the mark as describing a major characteristic of the
services, i.e., that “super laundries” are the object and
focus of the distributorship and construction services.
Nor do we agree with applicant’s argument that the
combination of “super” and “laundry” creates an incongruous
or creative or unique mark. Rather, applicant’s mark,
SUPER LAUNDRY, when used in connection with applicant’s
identified services, immediately describes, without
conjecture or speculation, a significant feature or
characteristic of applicant’s services, as discussed above.
Nothing requires the exercise of imagination or mental
processing or gathering of further information in order for
purchasers of and prospective customers for applicant’s
services to readily perceive the merely descriptive
Ser. No. 75/468157
13
significance of the phrase SUPER LAUNDRY as it pertains to
applicant’s services. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987);
In re Intelligent Instrumentation Inc., 40 USPQ2d 1792
(TTAB 1996); and In re Time Solutions, Inc., 33 USPQ2d 1156
(TTAB 1994).
With respect to the third-party registrations for
marks including the word “super” made of record by
applicant, three of these registrations include disclaimers
of the wording (including the term “super”) and are
“carried” by the design which is part of each of those
three marks. Although there are other registrations of
marks with no disclaimer of the word “super,” this evidence
is not persuasive of a different result in this case.
While uniform treatment under the Trademark Act is an
administrative goal, the Board’s task in an ex parte appeal
is to determine, based on the record before us, whether
applicant’s mark is merely descriptive. As often noted by
the Board, each case must decided on its own merits. We
are not privy to the records of the third-party
registration files and, moreover, the determination of
registrability of those particular marks by the Trademark
Examining Attorneys cannot control the merits in the case
Ser. No. 75/468157
14
now before us. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to
[applicant’s application], the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”)
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed as to both classes
of services.