Deslauriers, Inc.

Trademark Trial and Appeal Board

Jun 16, 2010

No. 77614491 (T.T.A.B. Jun. 16, 2010)

Mailed: June 16, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Deslauriers, Inc.
________

Consolidated
Serial Nos. 77614485
and 77614491
_______

F. William McLaughlin of Wood, Philips, Katz, Clark &
Mortimer for Deslauriers, Inc.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Bucher, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On November 14, 2008 applicant, Deslauriers, Inc.,
applied to register in standard characters on the Principal
Register the marks GROUT SAMPLE BOX1 and GSB2 both for
“cardboard containers including divider inserts,” in
International Class 16, based upon applicant’s assertion in

1 Application Serial No. 77614485.
2 Application Serial No. 77614491.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser Nos. 77614485 and 77614491
2
each case of January 31, 2000 as the date of first use of
the mark in commerce.
The trademark examining attorney refused registration
to both marks under Section 2(e)(1) of the Trademark Act on
the ground that such marks are merely descriptive of a
feature or quality of applicant’s goods.3
When the refusals were made final, applicant appealed.
Applicant filed main briefs on the issue under appeal in
both cases; the examining attorney filed a consolidated
brief; and applicant filed a consolidated reply brief.4
Refusal to Register Under Section 2(e)(1)
It is well settled that a term is considered to be
merely descriptive of goods and/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, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor

3 In addition, the examining attorney asserted genericness as a
ground for refusal in the first and final Office actions issued
in both applications. However, in his consolidated brief on
appeal, the examining attorney asserts that “no genericness
refusal was ever actually issued” (page 2, footnote 1).
Accordingly, the genericness refusal is deemed withdrawn and will
be given no further consideration.
4 On January 28, 2010, the Board granted the examining attorney’s
motion to consolidate these proceedings.
Ser Nos. 77614485 and 77614491
3
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/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 feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
Application Serial No. 77614485
In support of the refusal to register the mark GROUT
SAMPLE BOX under Trademark Act Section 2(e)(1), the
examining attorney has relied upon dictionary definitions
of the mark’s component terms. According to these
definitions, “grout” may be defined, inter alia, as “a thin
mortar used to fill cracks and crevices in masonry”;
“sample” may be defined, inter alia, as “a portion, piece,
or segment that is representative of a whole”; and “box”
may be defined, inter alia, as “a container typically
constructed with four sides perpendicular to the base and
Ser Nos. 77614485 and 77614491
4
often having a lid or cover.”5 The examining attorney
further submitted a screenshot from applicant’s internet
website containing the following information:
Frequently Asked Questions
GROUT SAMPLE BOX (GSB)
The Grout Sample Box (GSB) is a patented (Patent
# 5942192) product specifically designed for use
in casting 3.125” X 3.125” X 6.250” prisms of
masonry grout for verification of compressive
strength.6

The examining attorney also submitted information from
applicant’s above-noted U.S. Patent 5942192 for the recited
goods. The abstract for such patent identifies the
invention as follows:
A method and apparatus for facilitating the task
of collection and transporting grout specimens.
An apparatus in accordance with the invention is
comprised of a container or box formed of stiff
sheet material enclosing an interior volume and a
partition structure, also formed of stiff sheet
material, mounted in the interior volume to form
multiple mold cavities….7

The examining attorney submitted in addition third-party
advertisements in which the goods under the GROUT SAMPLE
BOX mark are described as follows: “cardboard box designed
to be used to mold grout test samples….;”8 and “GROUT SAMPLE

5 The examining attorney cites to The American Heritage
Dictionary of the English Language, Fourth Edition (2000) for
these definitions. We note that copies of the proffered
definitions were submitted with the examining attorney’s first
Office action.
6 www.deslinc.com
7 patfl.uspto.gov
8 www.myerstest.com
Ser Nos. 77614485 and 77614491
5
BOX (GSB) – The GSB performs as a mold to form 4 3x3x6”
mortar samples and as a transport/shipping container.”9
Finally, the examining attorney submitted a business
profile for applicant from an internet website indicating
as follows: “our concrete testing products include steel
slump core, grout sample box, canvas wrap, test cylinder
lids, graduating tamping rod and stripping tool.”10
We turn then to our determination of whether the mark
GROUT SAMPLE BOX merely describes the goods identified
thereby. As noted above, the examining attorney has made
of record dictionary definitions of the terms comprising
the applied-for mark. Based upon these dictionary
definitions, we find that applicant’s mark merely describes
a container, or box, used to create or transport
representative samples of a thin mortar commonly known as
grout. It is settled that “evidence [that a term is merely
descriptive] may be obtained from any competent source,
such as dictionaries, newspapers, or surveys." See In re
Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, (Fed.
Cir. 2005); and In re Bed & Breakfast Registry, 791 F.2d
157, 229 USPQ 818 (Fed. Cir. 1986). We note that applicant
does not dispute these definitions of the wording

9 www.geotestinst.com
10 www.processregister.com/Deslauriers_Inc/Supplier
Ser Nos. 77614485 and 77614491
6
comprising its mark, but argues that neither the words
themselves nor the combination thereof in its mark are
descriptive of its goods. However, applicant’s argument is
contradicted by its own patent for these goods, which
describes them as a box used to collect or transport grout
specimens. Further, and as noted above, applicant’s goods
under the GROUT SAMPLE BOX mark are described in a third-
party internet advertisement as a cardboard box used to
mold grout test samples.” It is settled that material
obtained from the Internet is acceptable in ex parte
proceedings as evidence of potential public exposure to a
term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB
2002).
As indicated above, applicant’s goods are identified
as a “cardboard container including divider inserts.” The
patent for these goods confirms that they consist of a box
used to collect or transport grout specimens. Internet
advertisements for applicant’s goods identify them as a box
used for molding grout samples. Thus, the evidence made of
record by the examining attorney supports a finding that,
as applied to applicant's goods, the term GROUT SAMPLE BOX
would immediately describe, without conjecture or
speculation, a significant characteristic or feature of the
goods. Prospective purchasers, upon confronting the term
Ser Nos. 77614485 and 77614491
7
GROUT SAMPLE BOX for applicant's goods, would immediately
perceive that the goods consist of a box used to mold or
transport grout samples.
Accordingly, we find that applicant's mark, GROUT
SAMPLE BOX, in its application Serial No. 77614485, is
merely descriptive as contemplated by Section 2(e)(1) of
the Act.
Application Serial No. 77614491
In support of the refusal to register the mark GSB
under Trademark Act Section 2(e)(1), the examining attorney
has relied upon evidence submitted in support of the
refusal to register the mark GROUT SAMPLE BOX and argues
that GSB is an acronym used interchangeably with GROUT
SAMPLE BOX and that the terms are “synonymous.” However,
upon careful examination of this evidence, of which the
examples quoted above are illustrative, it is unclear
whether applicant and third parties utilize GSB as
shorthand when referring to GROUT SAMPLE BOX or whether
such examples actually display GSB as a source indicator.
Indeed, substantially all of the evidence made of record by
the examining attorney displaying the designation GSB
appears to be used only in connection with applicant’s
goods.
In this case, the evidence made of record by the
Ser Nos. 77614485 and 77614491
8
examining attorney fails to support a finding that, as used
in connection with applicant's goods, the term GSB would
immediately describe, without conjecture or speculation, a
significant characteristic or feature thereof. The
evidence of record supports a finding that GSB is used by
applicant as an initialism for GROUT SAMPLE BOX. However,
such a finding does not, by itself, compel a determination
that GSB merely describes a feature or characteristic of
applicant’s goods. That is to say, simply because the
evidence of record shows that GSB is derived from the term
GROUT SAMPLE BOX, it does not necessarily show that the
initialism GSB would be understood by consumers of
applicant’s goods as merely describing applicant’s
cardboard containers including dividers. Moreover, and as
discussed above, substantially all of the examples appear
to use GSB as a trademark in relation to applicant’s goods.
Thus, we find that the evidence made of record by the
examining attorney in this case fails to support his
contention that the mark GSB merely describes a function,
feature or characteristic of the identified goods.
Finally, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubts in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
Ser Nos. 77614485 and 77614491
9
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Decision
The refusal to register is affirmed as to the term
GROUT SAMPLE BOX in application Serial No. 77614485.
The refusal to register is reversed as to the mark GSB
in application Serial No. 77614491. Accordingly,
application Serial No. 77614491 will be forwarded for
registration in due course.