Douglas John Shuntich

Trademark Trial and Appeal Board

Aug 5, 2013

No. 85369587 (T.T.A.B. Aug. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Douglas John Shuntich
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Serial No. 85369587
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Luke Brean of BreanLaw, LLC for Douglas John Shuntich.

Margaret A. Tierney, Trademark Examining Attorney, Law Office 111 (Robert L.
Lorenzo, Managing Attorney).
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Before Zervas, Ritchie, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On July 12, 2011, applicant Douglas John Shuntich applied to register the
mark SUPERCOOLER, in standard characters, for goods ultimately identified as:
Countertop and portable, household refrigerator/freezer
capable of storing items in the full temperature range “in-
between” standard freezer temperatures and standard
refrigeration temperatures between 0 - 40 degrees F (-18
to +4 deg. C), excluding freestanding and built-in
household refrigerators, freezers and refrigerated wine
cabinets, in International Class 11.1

1 Application Serial No. 85369587, filed on the basis of a bona fide intent to use the mark in
commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85369587
2

Registration has been finally refused on the ground that the applied-for mark
is merely descriptive of applicant’s goods pursuant to Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1).
Applicant timely appealed, and both applicant and the examining attorney
filed briefs.
Analysis
A mark is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of an ingredient, quality, characteristic, function,
feature, purpose, or use of the goods with which it is used. See, e.g., In re Chamber
of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012);
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular mark is merely descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which the mark is used, and the possible significance that the mark is likely to have
to the average purchaser encountering the goods or services in the marketplace.
See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978); In re Eng’g Sys. Corp., 2 USPQ2d 1075, 1076
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
While a combination of descriptive terms may be registrable if the composite
creates a unitary mark with a separate, nondescriptive meaning, In re Colonial
Stores, Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968), the mere combination
of descriptive words does not necessarily create a nondescriptive word or phrase.
Serial No. 85369587
3

In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each
component retains its descriptive significance in relation to the goods or services,
the combination results in a composite that is itself descriptive. See, e.g., In re
Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (BATTLECAM merely
descriptive for computer game software); In re Tower Tech, Inc., 64 USPQ2d 1314,
1317-18 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and
industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084, 1088
(TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in
developing and deploying application programs).
The examining attorney has refused registration under Section 2(e)(1) for two
reasons. First, she contends that the mark SUPERCOOLER is descriptive of
applicant’s goods because they employ the process of “supercooling,” in which a
liquid is chilled below its freezing point while remaining in a liquid, rather than a
solid, state – e.g., in the form of water rather than ice.
Applicant denies this assertion, characterizing it as “100% incorrect.”2
Applicant argues that its household devices are neither capable of nor designed to
employ the physical phenomenon known as “supercooling,” stating that
supercooling water at standard air pressure requires a temperature of -55°
Fahrenheit, far below the identified temperature range for applicant’s goods (0° to
40° Fahrenheit).

2 Applicant’s Brief at unnumbered page 3.
Serial No. 85369587
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We find the evidence of record to be ambiguous as to whether applicant’s
goods can function as “supercoolers” in the scientific sense. For example, a
Wikipedia article titled “Supercooling” generally supports applicant’s argument,
stating that pure water normally freezes at 32° Fahrenheit, “but it can also be
‘supercooled’ at standard pressure down to its crystal homogeneous nucleation at
almost” -43.6° Fahrenheit.3 The article references commercial applications of
supercooling in refrigeration, including “freezers that cool drinks to a supercooled
level so that when it is opened it slushes over.”4 There is no evidence that
applicant’s goods offer this function. On the other hand, the examining attorney
provided evidence suggesting that supercooling is achievable in the temperature
range of applicant’s goods: “Supercooling of water is ubiquitous in nature . . . .
Water in rivers, lakes, and seas is only supercooled to about 0.01 °C.”5 This
temperature is within the range reached by applicant’s goods (-18° C to +4° C).
In light of applicant’s denial and the ambiguous record evidence, we find that
the examining attorney has not met her burden to establish that SUPERCOOLER
describes a “supercooling” feature or function of applicant’s goods.6

3 November 9, 2011 Office action at 8.
4 Id. at 10.
5 Reconsideration letter at 11 (from the page faculty.gg.uwyo.edu/kempema/supercool.html,
titled “Supercooled Water, Crystallization and Latent Heat Release Demonstration”).
6 Registration was not refused on the ground that the mark was deceptively misdescriptive
pursuant to Trademark Act Section 2(e)(1).
Serial No. 85369587
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The second reason for refusal is that the mark is “laudatory” in connection
with the identified goods under Trademark Act Section 2(e)(1).7 It is well
established that laudatory terms – those that attribute quality or excellence to
goods or services – are merely descriptive under Section 2(e)(1). See DuoProSS
Meditech Corp., 103 USPQ2d at 1759 (finding SNAP SIMPLY SAFER merely
descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration
and injection needles; medical, hypodermic, aspiration and injection syringes”); In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding
THE ULTIMATE BIKE RACK a laudatory descriptive phrase that touts the
superiority of applicant’s bike racks); In re Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056, 1058 (Fed. Cir. 1999) (finding THE BEST BEER IN AMERICA so
highly laudatory and descriptive that it is incapable of acquiring distinctiveness);
Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007) (ULTIMATE
POLO consists of laudatory term “ultimate” and generic term “polo” describing best
possible shirts); In re Dos Padres Inc., 49 USPQ2d 1860, 1862 (TTAB 1998)
(QUESO QUESADILLA SUPREME merely descriptive of cheese).
Of particular relevance here, we concluded in In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1052 (TTAB 2002), that
if the word “super” is combined with a word which names
the goods or services, or a principal component, grade or
size thereof, then the composite term is considered merely
descriptive of the goods or services, but if such is not
strictly true, then the composite mark is regarded as
suggestive of the products or services.

7 Examiner’s brief at unnumbered pages 10-15.
Serial No. 85369587
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Applicant’s mark is SUPERCOOLER. The examining attorney has made of
record dictionary definitions of “cooler” that include “refrigerator.”8 The evidence
thus shows that “cooler” is a noun naming applicant’s refrigerator/freezer. Applying
the Phillips-Van Heusen test, we find SUPERCOOLER to be laudatory and merely
descriptive of applicant’s goods.
Applicant makes several additional arguments for registration, but we do not
find them to be persuasive. First, applicant urges that its mark “is both suggestive
and descriptive,” stating that SUPERCOOLER “does not directly describe the
product and requires a substantial amount of imagination to ascertain the full
range of abilities of the device.”9 A term need not immediately convey an idea of
each and every specific feature of the applicant’s goods in order to be considered
merely descriptive; it is enough that the term describes one single, significant
feature or attribute. See In re Chamber of Commerce, 102 USPQ2d at 1219; In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A
mark may be merely descriptive even if it does not describe the full scope and extent
of the applicant’s goods or services.”) (quotation omitted).
Applicant next argues that competitors do not need to use the term
SUPERCOOLER to describe their goods because “[t]here is no inherent relationship
between the term SUPERCOOLER and a device that through precision
temperature and humidity control prolongs freshness of perishable contents. There
are innumerable other marks that a competitor could use to describe such a

8 November 9, 2011 Office action at 5 (from Merriam-Webster.com).
9 Applicant’s Brief at unnumbered page 7.
Serial No. 85369587
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device.”10 But the fact that other words or phrases exist for competitors to use does
not redeem an otherwise merely descriptive word or phrase. See Roselux Chem. Co.
v. Parson Ammonia Co., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962).
Finally, and in a related argument, applicant contends that competitors do
not use SUPERCOOLER to describe their products. Indeed, applicant asserts that
it has no competitors:
Given the unique nature of the cooling and humidity
control capabilities of the SUPERCOOLER to the
applicant’s knowledge there are no directly competing
products on the market. As the SUPERCOOLER does not
directly compete with traditional refrigerators and
freezers, but is in a unique class of its own, no other
competitor is using SUPERCOOLER to describe their
products.11
It is well-established, however, that the fact that an applicant may be the first and
only user of a merely descriptive designation does not justify registration if, as here,
the only significance conveyed by the term is merely descriptive. See In re Nat’l
Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983).
We find that SUPERCOOLER is a laudatory descriptive term within the
meaning of Section 2(e)(1) in association with applicant’s goods.
Decision: The refusal to register applicant’s mark under Section 2(e)(1) of the
Trademark Act is affirmed.

10 Id. at unnumbered page 8.
11 Id.