GrassGmbH

Trademark Trial and Appeal Board

May 17, 2006

No. 76544861 (T.T.A.B. May. 17, 2006)

Mailed:
May 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Grass GmbH
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Serial No. 76544861
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Andrew Roppel of Kilpatrick Stockton LLP for Grass GmbH.

William H. Dawe III, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark SNAP ON 3000 AIRMATIC (in standard character
form) for various items of furniture hardware and fittings
identified in the application, as amended, as
metal furniture hinges; metal furniture fittings,
namely, follower strips for aligning slides and
hinges, base plates for connecting hinges and slides
to doors and drawers, cover caps for concealing
exposed screw heads or holes, cover plates for
concealing holes, face frame adapter plates for
installing hinges to face frame cabinets and
drawers, angle reduction clips for reducing the
angle between the front or back of a drawer and the
railing, hooks, dowels, screws, screw fasteners in
THIS OPINION IS CITABLE
AS PRECEDENT OF THE
TTAB
Ser. No. 76544861
2
the nature of threaded fasteners, support brackets
for shelves, spacers for creating and maintaining
appropriate gaps for shelves, drawers, and cabinets,
angle correction wedges for correcting the angle
between the base plate of the hinge and the side of
a cupboard, and locks; adjustable metal furniture
fittings, namely, front plate adjustment hardware
for metal, plastic and/or wood drawer slides

in International Class 6, and

metal furniture fittings, namely, door slides;
furniture compartments/dividers and furniture
drawers of metal; metal drawer frames; divider
systems for furniture drawers and furniture
compartments comprised of metal furniture divider
elements, knife inserts, spice rack inserts, and
silver ware inserts; furniture, namely, furniture
compartments/dividers and furniture drawers of
plastic and/or wood; non-metal drawer frames; non-
metal furniture hinges; non-metal furniture
fittings, namely, cover caps for concealing exposed
screw heads or holes, cover plates for concealing
holes, spacer wedges for creating and maintaining
appropriate gaps for shelves, drawers, and cabinets,
spacers for creating and maintaining appropriate
gaps for shelves, drawers, and cabinets, door
protectors for protecting doors from damage, dowels,
locking clips for locking drawers, shelf supports
for providing support and stability to shelves,
bumper pads for preventing noise and vibration
during the opening and closing of drawers and doors,
door stops for stopping doors at a point certain,
damping elements in the nature of a pneumatic shock
absorber for absorbing the force and noise of a
slammed or quickly shut drawer or door and for
allowing the drawer or door to gently shut, support
brackets for shelves, pilaster strips in the nature
of inserts that allow for shelves or drawers to be
installed at different heights, pilaster dowels for
connecting shelves or drawers to pilaster strips,
couplers in the nature of threaded and unthreaded
connectors for use with furniture and its parts and
fittings, fasteners in the nature of screws and
connector pins, stabilizers for providing added
Ser. No. 76544861
3
stability and support to doors and drawers, cross
braces and corner braces for providing added
stability and support to doors, shelves, and
drawers, drawer clamps, rollers for drawer slides,
and screws; adjustable non-metal furniture fittings,
namely, front plate adjustment hardware for metal,
plastic and/or wood drawer slides; divider systems
for furniture drawers and furniture compartments
comprised of furniture divider elements, knife
inserts, spice rack inserts and silver ware inserts
of wood, or wood and metal and/or plastic

in International Class 20.1

In response to the Trademark Examining Attorney’s
request for information in the first Office action,
applicant stated that the significance of the wording “snap
on” in the mark is that “some of Applicant’s goods are
affixed by snapping them on,” and that the significance of
“3000” in the mark is that it “is a model number.”
Applicant also responded to the Trademark Examining
Attorney’s requirement for a disclaimer of this matter by
submitting the following disclaimer: “No claim is made to
the exclusive right to use SNAP ON and 3000 apart from the
mark as shown.”

1 Serial No. 76544861, filed September 4, 2003. The application
is made under Trademark Act Section 44(e) based on applicant’s
German Registration No. 30311833, with a claim of priority under
Trademark Act Section 44(d) based on applicant’s German
application no. 30311833.4/0, filed on May 28, 2003.

Ser. No. 76544861
4
At issue in this appeal is the Trademark Examining
Attorney’s final requirement that applicant disclaim SNAP
ON 3000 as a unitary expression, rather than as separately
disclaimed terms. That is, the Trademark Examining
Attorney has required applicant to delete the word “and”
from its disclaimer, and to submit a disclaimer in the
following form: “No claim is made to the exclusive right
to use SNAP ON 3000 apart from the mark as shown.”2 Having
considered the arguments of counsel and the relevant
authorities, we reverse the requirement for a disclaimer of
SNAP ON 3000.
Trademark Act Section 6(a), 15 U.S.C. §1056(a),
provides that the Office “may require the applicant to
disclaim an unregistrable component of a mark otherwise
registrable.” Pursuant to Trademark Act Section 2(e)(1),
merely descriptive matter in a mark is unregistrable; it

2 We note that applicant has not contested the Trademark
Examining Attorney’s requirement that SNAP ON and 3000 both be
disclaimed. In its brief, applicant has argued that the
designation “3000,” although a model number, is arbitrary as
applied to applicant’s goods. However, applicant has not argued
that it should not be required to disclaim “3000,” and we
therefore do not address the issue of whether such a disclaimer
is necessary or proper in this case. Cf. Eastman Kodak Co. v.
Bell & Howell Document Management Products Co., 994 F.2d 1569, 26
USPQ2d 1912 (Fed. Cir. 1993); Saab-Scania Aktiebolag v.
Sparkomatic Corp., 26 USPQ2d 1709 (TTAB 1993). The only issue
before us is the proper format of applicant’s disclaimer of the
designations SNAP ON and 3000, i.e., whether the disclaimer must
be of SNAP ON 3000 or whether applicant may disclaim SNAP ON and
3000 separately.
Ser. No. 76544861
5
therefore is subject to disclaimer under Section 6(a). The
Office may refuse registration of the entire mark if
applicant fails to comply with a proper disclaimer
requirement. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re
National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977);
In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
It has been held that “[d]isclaimers of individual
components of complete descriptive phrases are improper,”
and that “[u]nitary expressions should be disclaimed as a
composite.” In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r
Pats. 1987)(GLASS TECHNOLOGY is a unitary descriptive
phrase as applied to automobile windshield repair kits and
must be disclaimed as a composite, not as separate words).
See also In re Medical Disposables Co., 25 USPQ2d 1801
(TTAB 1992)(MEDICAL DISPOSABLES is a unitary descriptive
expression which must be disclaimed as a composite);
American Speech-Language-Hearing Association v. National
Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB
1984)(CERTIFIED HEARING AID AUDIOLOGIST “clearly is a
unitary expression that should be disclaimed in its
entirety”); and In re Surelock Mfg. Co., Inc., 125 USPQ 23
Ser. No. 76544861
6
(TTAB 1960)(THE RED CUP for red-colored hydraulic wheel
cylinder brake cups must be disclaimed as a composite).
The Trademark Manual of Examining Procedure, citing three
of the four cases cited above, states as follows:

Unregistrable matter must be disclaimed in its
entirety. For example, when requiring a
disclaimer of terms that form a grammatically
or otherwise unitary expression (e.g. “SHOE
FACTORY, INC.”), the examining attorney must
require that they be disclaimed in their
entirety. … This standard should be construed
strictly; therefore, disclaimer of individual
words separately will usually be appropriate
only when the words being disclaimed are
separated by registrable wording.

TMEP §1213.08(b)(4th ed. 2005).
Thus, our determination in this case hinges on whether
SNAP ON 3000, as it appears in applicant’s mark SNAP ON
3000 AIRMATIC, forms “a grammatically or otherwise unitary
expression.” Id. If so, the Trademark Examining
Attorney’s requirement for a disclaimer of SNAP ON 3000 (as
opposed to “SNAP ON and 3000”) is proper.
The Trademark Examining Attorney argues that SNAP ON
is merely descriptive of a feature of applicant’s goods,
and that 3000 is merely descriptive because it is a model
number. “Clearly, the descriptive wording ‘SNAP ON’ and
the model number 3000 is [sic] not separated by registrable
matter. Accordingly, the wording is a complete descriptive
Ser. No. 76544861
7
phrase.” (Trademark Examining Attorney’s brief at
unnumbered page 4.) He further argues:

Clearly, the terminology SNAP ON 3000 is a
descriptive phrase for a model 3000 with SNAP
ON features. The designation of model number
3000 creates the commercial impression that the
applicant has a line of other model numbers for
the SNAP ON goods. Therefore, the model number
does not create a commercial impression that is
separate and apart from the descriptive wording
‘SNAP ON.’ To the contrary, the descriptive
terms are a complete unitary phrase.

(Trademark Examining Attorney’s brief at unnumbered page
4.)
Applicant, for its part, argues that SNAP ON and 3000
do not form a “grammatically or otherwise unitary
expression” as contemplated by TMEP §1213.08(b). Applicant
notes in this regard that the Trademark Examining Attorney
asserts two different bases for requiring disclaimers of
SNAP ON and 3000; that is, SNAP ON must be disclaimed
because it is merely descriptive of a feature of the goods,
while 3000 must be disclaimed because it is a model number.
Unlike the unitary expressions involved in the GLASS
TECHNOLOGY and THE RED CUP cases, applicant contends, there
is no grammatical connection or other nexus between SNAP ON
and 3000 except their contiguity in the mark. Applicant
argues that it “could have chosen any number as a model
Ser. No. 76544861
8
number. In that sense, the model number ‘3000’ is
arbitrary and therefore very different from the wording
‘snap on,’ which has a recognized meaning in the industry
and in connection with the goods sold under the subject
mark.” (Applicant’s brief at page 4.) Applicant further
argues that its separate disclaimers of SNAP ON and 3000
will allow competitors to use each of those terms
individually, but that competitors have no need to use the
composite SNAP ON 3000, “a combination of words and numbers
that was coined by Applicant.” (Applicant’s brief at page
4.)3
We find that SNAP ON 3000 is not a unitary expression
which must be disclaimed in its entirety. Unlike the
expressions at issue in the previously-cited cases, i.e.,
GLASS TECHNOLOGY, MEDICAL DISPOSABLES, CERTIFIED HEARING
AID AUDIOLOGIST, and THE RED CUP, which are grammatically
coherent and intact phrases, SNAP ON 3000 is composed of
two separable elements, i.e., the descriptive wording SNAP

3 Additionally, applicant points to the numerous third-party
registrations it has made of record, in which the marks include a
descriptive term next to an Arabic numeral and in which the
registrant was allowed to disclaim the descriptive matter and the
numeral separately. The Trademark Examining Attorney responds
that the Board is not bound by the mistakes or decisions made by
Trademark Examining Attorneys in other cases. We agree that
these third-party registrations are of little probative value in
this case. See In re Medical Disposables Co., supra; see
generally In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001).
Ser. No. 76544861
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ON and the model number 3000. These two components are
descriptive in different ways and for different reasons;
they do not form a grammatically or otherwise unitary whole
with a single descriptive significance. SNAP ON denotes a
feature of the goods, and then, separately, 3000 denotes a
model number for the goods. There is no grammatical or
other inherent connection between the two terms.
As noted above, TMEP §1213.08(b) states that
“…disclaimer of individual words separately will usually be
appropriate only when the words being disclaimed are
separated by registrable wording.” We deem this “separated
by registrable wording” standard to be a guideline that
often will be helpful in determining whether the matter in
question is unitary; it is not in itself a dispositive rule
of law or the end of the inquiry. The issue is whether the
components form a grammatically or otherwise unitary
expression, not whether they are contiguous. In cases such
as this, although the components in question are contiguous
in the mark, they are not a unitary expression because each
component retains its separate descriptive significance;
the components do not merge to form a composite which has a
single, unitary significance.
Decision: The requirement for a disclaimer of “SNAP
ON 3000” is reversed. Applicant’s current disclaimer of
Ser. No. 76544861
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“SNAP ON and 3000” is acceptable and shall remain of
record.