GP Global Limited

Trademark Trial and Appeal Board

Mar 21, 2013

No. 85345544 (T.T.A.B. Mar. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: March 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re GP Global Limited
_____

Serial No. 85345544
_____

James P. Broder of Roeder & Broder LLP,
for GP Global Limited.
Pamela Y. Willis, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Bucher, Zervas and Lykos,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
GP Global Limited (“applicant”) seeks registration on the Principal Register of
the mark FRAGRANCE PODS (in standard character format) for “room freshen-
ers,” in International Class 5.1 During ex parte prosecution of the application, appli-
cant disclaimed the word “Fragrance” apart from the mark as shown.
The examining attorney has refused registration on the ground that the term is
merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85345544 was filed on June 14, 2011, based upon applicant’s alle-
gation of a bona fide intention to use the mark in commerce.
Serial No. 85345544
2

§ 1052(e)(1). After the examining attorney made the refusal final, applicant ap-
pealed to this Board. We affirm the refusal to register.
A term is merely descriptive if it immediately conveys knowledge of a signifi-
cant quality, characteristic, function, feature or purpose of the products it identifies.
In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219
(Fed. Cir. 2012; and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is determined in relation to
the goods for which registration is sought and the context in which the term is used.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In
re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is
whether someone who knows what the products are will understand the mark im-
mediately to convey information about them. In re MBNA America Bank N.A., 340
F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
Applicant argues that this term is suggestive, not descriptive; that the examin-
ing attorney failed to prove descriptiveness for this designation as to these goods
based on (1) the imagination test, (2) the competitors’ need test,2 and (3) the com-
petitors’ use test.3
Under the “imagination test,” the “more imagination that is required on the
customer’s part to get some direct description of the product from the term, the
more likely the term is suggestive, not descriptive.”4 That is, we are focused on

2 See, e.g., 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11:68 (4th ed. 2012).
3 Id. at § 11:69.
4 Id. at § 11:67.
Serial No. 85345544
3

whether someone who knows what the goods are will understand the mark to con-
vey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317
(TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
Applying this standard, the examining attorney takes the position that the
term “fragrance” immediately describes an ingredient of the room fresheners, and
“pods” immediately describes the items in which the room fresheners are housed.
She contends that consumers would immediately perceive that the two-word term
“Fragrance Pods” describes a significant characteristic of the goods in this case.
It appears from this record that “room fresheners” tend to be sanitizers and/or
neutralizers that usually include, in addition, a masking fragrance. Hence, not sur-
prisingly, by way of an examiner’s amendment, applicant agreed with the examin-
ing attorney that no claim was made to the exclusive right to use the leading word
“Fragrance” apart from the mark as shown.
Turning then to the word “pod,” the examining attorney made of record a dic-
tionary definition as follows:
pod noun
1. a dry fruit or seed vessel developed from a single carpel enclosing one or more seeds
and usually splitting along two sutures at maturity, as a legume
2. a podlike container, as a cocoon of a locust
3. ☆ any of various enclosures, as a streamlined housing for a jet engine. 5

We add the following dictionary entry:

5 http://www.yourdictionary.com/pod
Serial No. 85345544
4

pod noun
1. a somewhat elongated, two-valved seed vessel, as that of the pea or bean.
2. a dehiscent fruit or pericarp having several seeds.
3. Entomology . a. an insect egg case. b. a compact mass of insect eggs.
4. a streamlined enclosure, housing, or detachable container of some kind: an engine pod
under the wing of an aircraft.
5. a protective compartment, as for an automobile's instrument gauges. 6

The first definition in each of these dictionary entries point out the origins of
the word “pod” in the biomorphic world of natural seed vessels (e.g., pea “pods”),
where the word “pods” stresses the concept of a round, elongated enclosures where
the length/height exceeds any other dimension of the vessel. Later entries suggest
that in more recent years, as applied to science and technology, it has become short
for a detachable unit having a special function (e.g., space capsules, jet engine
“pods,” etc.). In the modern vernacular, as within the field of industrial design for
consumer products, the word “pod” carries with it the idea of a compact, streamlined
enclosure (e.g., protective compartment for an automobile’s instrument gauges).
The question then is whether the term “pods” immediately describes a signifi-
cant feature of room fresheners. In this context, the examining attorney has shown
that at least three other manufacturers of odor control products already use the
word “pod” in connection with two very different types of room air fresheners, name-
ly, with scented candles and with automatic room fresheners/deodorizers.
First, the examining attorney included screen prints showing almost a hundred

6 http://dictionary.reference.com/ This Board may sua sponte take judicial notice of diction-
ary definitions. See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 85345544
5

SCENT POD7 candle warmers and “Scent
Pods” from the website of the earlier cit-
ed registrant, Gold Canyon Internation-
al, L.L.C.

Second, as applied to automatic room fresheners/deodorizers, it seems that the
“DoorPod” room air freshener and Share Corporation’s “Pod Fresheners” are both
using the term “pod” much as would applicant, to refer to a stationary room fresh-
ener housed in a compact enclosure:
8 9
While scented candles would seem to be decidedly low-tech, and automatic room
fresheners/deodorizers a bit higher-tech, in both cases it seems the desired connota-

7 Registration No. 3444294 issued on June 10, 2008; No claim is made to the exclusive
right to use the word “Scent” apart from the mark as shown.
8 http://www.cleanfreak.com/Qstore/p002086.htm
9 http://www.sharecorp.com/products.php?prod=836
Serial No. 85345544
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tion is the compact or streamlined design of the unit. As with the pictured goods
marketed under “DoorPod” and “Pod Fresheners,” we presume that applicant’s
product might well combine some degree of electronic technology with a replaceable
source of fragrance.
We are forced to make some presumptions inasmuch as this remains an in-
tent-to-use application. Applicant was not asked, nor did it volunteer, exactly what
kind of device its “room fresheners” will be. The record shows examples of a wide
variety of household and commercial odor control products. Some are air sanitizers
or disinfectants designed to kill bacteria. Some are neutralizers that depend upon
chemical reactions. Yet others are “fresheners” that may employ sanitizers and/or
neutralizers, and then usually include a masking fragrance. Applicant’s identifica-
tion of goods, “room fresheners,” suggests it falls into this general category.
In the broad field of odor control products, we see in this record the relatively
low-tech and fairly inexpensive devices such as scented candles, other types of wax
melts, and an array of flameless fragrances including for example liquids and gels
in twisting cover deodorizers/diffusers and fragrance emitting reeds. On the very
top end are sophisticated metered dispensers and electronic purification equipment.
In between are air fresheners like aerosol sprays or hand pump devices, small elec-
trical socket sized plug-in devices, electric air fresheners with and without fans, and
a variety of other kinds of automatic room fresheners/deodorizers.
In an intent-to-use application, where none of the details of the room fresheners
are part of the record, we must presume that a logical option for the design of the
product, for example, is that the “room fresheners” might well contain a “pod-like
Serial No. 85345544
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structure.” Under these circumstances, the examining attorney is not compelled to
prove that the word “pod” would be immediately descriptive of any conceivable type
of room freshener. In this context, it is somewhat disingenuous for applicant, with-
out offering any insights into its proposed product, to argue as follows:
As one simple alternative example, a “room freshener” could be a
scented spray. The Appellant respectfully asserts that an average
consumer looking at a scented spray type of room freshener,
would not have the immediate understanding, without thought or
imagination, between the proposed mark and the identified goods
that the Examiner suggests.
Actually, under our precedent, given that applicant’s named product might well
be a stationary room freshener housed in, or incorporating in some way, a compact
enclosure, it should not be necessary for the examining attorney to prove in the al-
ternative, that the term “pod” would be merely descriptive of something as unlikely
as a scented aerosol spray.
Furthermore, if this determination as to mere descriptiveness under Section
2(e)(1) of the Trademark Act were being made after the point where applicant had
made use in commerce, submitted an affidavit of use supported by a specimen, and
perhaps provided additional documentation demonstrating for the examining attor-
ney exactly how the involved room freshener worked, the same determination would
still need to be made, employing the very same standard.
In such a case, applicant is correct in pointing out that the determination of
whether a mark is merely descriptive must be made in relation to the named
goods for which registration is sought. Additionally, the proper test for descrip-
tiveness also considers the context in which the mark is used and the significance
that the mark is likely to have on the average purchaser encountering the goods in
Serial No. 85345544
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the marketplace. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
However, we do disagree with applicant’s further suggestion that the test is
whether a blindfolded person (or an examining attorney having no specimen or oth-
er information about applicant’s goods) could guess correctly exactly what appli-
cant’s goods are after being prompted only with applicant’s proposed mark. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) [GAS-
BADGE merely descriptive of a “gas monitoring badge”; “Appellant’s abstract test is
deficient – not only in denying consideration of evidence of the advertising materials
directed to its goods, but in failing to require consideration of its mark ‘when ap-
plied to the goods’ as required by statute.”]. Rather, the correct question is whether
someone who knows what the goods are will understand the mark to convey infor-
mation about them. Tower Tech, 64 USPQ2d at 1316-1317; Patent & Trademark
Services, 49 USPQ2d at 1539. Applied to the case at bar, it is not a requirement of
the case law that the prospective customer herein, upon seeing or hearing the al-
leged mark for the first time, knows immediately the exact technology that the
“room freshener” employs in order to create the desired fragrance.
Hence, based on this entire record, we conclude that the word “pods” in the con-
text of the named goods is merely descriptive.
Having determined that both of the individual words are merely descriptive, we
turn then to the question of the combination of these two terms. When two or more
merely descriptive terms are combined, the determination of whether the composite
Serial No. 85345544
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mark also has a merely descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial impression. If each
component retains its merely descriptive significance in relation to the goods or ser-
vices, the combination results in a composite that is itself merely descriptive. See
e.g., In re Petroglyph Games Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM
merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198
(TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real es-
tate consultation and real estate listing services); In re Tower Tech, Inc., 64
USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial cook-
ing towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and infor-
mation services in the food processing industry).
On the other hand, a mark consisting of a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, non-descriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods. In other words, we must consider the issue of de-
scriptiveness by looking at the mark in its entirety. Common words may be descrip-
tive when standing alone, but when used together in a composite mark, they may
become a valid trademark. See Concurrent Technologies Inc. v. Concurrent Technol-
ogies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989) (CONCURRENT TECHNOLOGIES
CORPORATION found not merely descriptive of printed electronic circuit boards be-
Serial No. 85345544
10

cause, while “concurrent” had meaning in the computer field, “concurrent technolo-
gies” had no established meaning in relation to computer hardware or software).
Applying this test, we find no new, unique or incongruous meaning with the
combination of “Fragrance” and “Pods.” Fragrance is a highly descriptive, if not ge-
neric term for the involved goods. Here it is used as an adjective describing the term
“pods,” a noun. We have seen that “pods” is not an unusual name for room freshen-
ers. Hence, no imagination is required to determine the significant characteristics of
the named goods.
Finally, applicant argues that the examining attorney has failed to discover any
usage by competitors of this exact terminology, or to demonstrate that competitors
need to use this combination of words. However, the fact that applicant may be the
first and only user of a merely descriptive designation does not justify registration if
the only significance conveyed by the term is merely descriptive. See In re Nat’l
Shooting Sports Found., Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING,
OUTDOOR TRADE SHOW AND CONFERENCE held descriptive for conducting and ar-
ranging trade shows in the hunting, shooting, and outdoor sports products field).
In conclusion, we agree with the examining attorney that prospective consum-
ers would immediately perceive the term “Fragrance Pods” as describing a signif-
icant characteristic of the goods in this case.
Decision: The refusal to register applicant’s term FRAGRANCE PODS un-
der Section 2(e)(1) of the Lanham Act is hereby affirmed.