Green Keepers, Inc.

Trademark Trial and Appeal Board

May 14, 2004

No. 75554047 (T.T.A.B. May. 14, 2004)

Mailed: May 14, 2004
Paper No. 38
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Green Keepers, Inc.
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Serial No. 75554047
_______
Jim Zegeer, Esq. for Green Keepers, Inc.
Linda E. Blohm, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Hohein, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Green Keepers, Inc. has filed an application to
register the phrase "SIDE GRIPPING ACTION" for "golf shoe
cleats."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
phrase "SIDE GRIPPING ACTION" is merely descriptive of them.
Registration also has been finally refused under Sections 1, 2
1 Ser. No. 75554047, filed on September 16, 1998, based on an
allegation of a bona fide intention to use such phrase in commerce.
By an amendment to allege use filed on August 28, 2001, the
application was amended to allege a date of first use anywhere of
March 26, 1998 and a date of first use in commerce of April 24, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75554047
2
and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on
the basis that, as used by applicant in the manner indicated by
the specimens, the phrase sought to be registered does not
function as a trademark to identify and distinguish applicant's
goods.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals to
register.
Turning first to the refusal on the ground of mere
descriptiveness, it is well settled that a phrase or term is
considered to be merely descriptive of goods or services, within
the meaning of Section 2(e)(1) of the Trademark Act, if it
forthwith conveys information concerning any significant
ingredient, quality, characteristic, feature, function, purpose,
subject matter or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a phrase or term describe
all of the properties or functions of the goods or services in
order for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the phrase or term describes a
significant attribute or idea about them. Moreover, whether a
phrase or term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the phrase or term
Ser. No. 75554047
3
would have to the average purchaser of the goods or services
because of the manner of such use. See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether consumers could
guess what the product [or service] is from consideration of the
mark alone is not the test." In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
Applicant, while conceding in its initial brief that
the goods "sold under appellant's mark have outward angled
traction teeth," asserts that its "mark, SIDE GRIPPING ACTION,
for golf shoe cleats is not merely descriptive." Specifically,
applicant contends that "[j]ust because the terms 'side',
'gripping' and 'action' have dictionary definitions, which in
some ways individually may suggest an attribute of applicant's
golf shoe cleats, [that] does not make the term [or phrase] SIDE
GRIPPING ACTION merely descriptive." Such phrase, applicant
urges, "is not the name of the goods and does not immediately
tell potential purchasers only what the goods are." Moreover,
applicant notes, "the mark is not in common usage in the trade."
Applicant maintains in view thereof that "the mark, at best, is
suggestive in that it requires imagination, thought and
perception to reach a conclusion of the nature of the goods on
which the mark is used" and thus it "does not immediately convey
an immediate idea of applicant's golf shoe cleats to a
purchaser."
The Examining Attorney, on the other hand, argues that
the phrase "SIDE GRIPPING ACTION" is merely descriptive because
it "describes a desirable feature/characteristic" of applicant's
Ser. No. 75554047
4
goods. In particular, she contends that such phrase "immediately
describes the manner or action of the golf shoe cleats" inasmuch
as "the sides of [applicant's] golf shoe cleats grip the turf on
which the golfer stands" and the "[p]rotruding cleats provide the
action of gripping."
In support of her position, the Examining Attorney
relies upon the definitions of record from The American Heritage
Dictionary of the English Language (3rd ed. 1992) of the words
"side," "grip" and "action." Such definitions include the
following:
(a) "side," which as a noun is defined
as "2. A surface of an object, especially a
surface joining a top and bottom: the four
sides of a box. 3. A surface that extends
more or less perpendicularly from an observer
standing in front: the side of the ship. 4.
Either of the two surfaces of a flat object:
the front side of a piece of paper; the two
sides of a record" and as an adjective is set
forth as "1. Located on a side: a side door.
2. From or to one side; oblique: a side
view";
(b) "grip," which as a verb is listed as
"1. To secure and maintain a tight hold on;
seize firmly"; and
(c) "action," which as a noun is defined
as "1. The state or process of acting or
doing. .... 7. a. The operating parts of a
mechanism. b. The manner in which such parts
operate."
We also observe that the record contains the following pertinent
excerpts from a search of the "Nexis" database (emphasis added):
"Sweepers typically slide on one foot
and push with the gripper foot while
scrubbing the ice floor in front of the
moving stone. Players keep their grip by
wearing special shoes, one of which has a
Teflon bottom to enhance sliding while the
Ser. No. 75554047
5
other has gripping action." -- N.Y. Times,
March 1, 1998 (article on the sport of
curling); and
"The rubber sole gives a nice, stable
gripping action, and it's so thin, its
indistinguishable from a fine leather sole."
-- Prevention, May 1993 (article headlined:
"Commuter shoes!").
In addition, the specimen of use submitted by
applicant, which appears to be a photocopy of an advertisement
for applicant's goods, contains the following paragraph of text
beneath the prominently displayed (in bold type) heading "The
number one spike on the Senior PGA Tour" (emphasis added):
Green Keepers Spikeless cleats took over
as the No. 1 spike on the Senior PGA Tour at
the PGA Seniors' Championship. .... Green
Keepers' offers aggressive outward-angle
traction teeth which provide lateral
stability during play and side-gripping
action on uneven terrain.
We further notice that the record contains a second piece of
advertising literature, which appears to be directed to
distributors and retailers of applicant's goods and bears the
slogan "Traction by Design." Such literature refers to
applicant's "Green Keepers Spikeless Golf Cleats" in relevant
part as follows (emphasis added):
The purpose of alternative spikes is to
control damage to greens resulting in better
playing surfaces.
....
But what about traction? Is it possible
to achieve superior traction in an
alternative spike?
Absolutely. Green Keepers' "Traction by
Design" offers aggressive outward-angle
traction teeth which provide lateral
stability during play and side-gripping
action on uneven terrain.
Ser. No. 75554047
6
Lastly, we also notice that the record contains a third example
of advertising, consisting of a printout of a page from
applicant's website http://www.gkspikes.com/introducing.html,2
which in reference to applicant's "Green Keepers Spikeless Golf
Cleats" likewise states in pertinent part as follows (emphasis
added):
In this new age of alternative cleats,
the quest for superior traction and effective
damage control ends here. Green Keepers
"Traction by Designï››" has set the standard
with our aggressive outward-angled traction
teeth that provide lateral stability during
play and side gripping action on uneven
terrain.
In view of the above evidence, we agree with the
Examining Attorney that consumers would immediately understand
that the phrase "SIDE GRIPPING ACTION" merely describes a
significant characteristic or feature of applicant's goods.
Specifically, such term conveys forthwith, without speculation or
conjecture, that applicant's golf shoe cleats, when worn while
playing the game of golf, provide a player's shoes with side
gripping action on uneven terrain, such as in the rough or the
edge of a bunker. Clearly, as pointed out by the Examining
Attorney, the protrusions on the sides of applicant's golf shoe
cleats provide the action of gripping the turf on which the
golfer stands. There is thus nothing in the combination of the
2 Although applicant, when it submitted such copy, "proposed [it] as a
substitute specimen, if acceptable to the Examining Attorney," the
printout cannot be considered as a substitute specimen inasmuch as
applicant failed to furnish the required affidavit or declaration
attesting to the use thereof in commerce as of a date at least as
early as the filing of its amendment to allege use. Trademark Rule
2.59(b)(1).
Ser. No. 75554047
7
constituent words "side," "gripping" and "action" into the phrase
"SIDE GRIPPING ACTION" which is incongruous, ambiguous or
suggestive of a double entendre, nor is there anything about such
phrase which requires imagination, thought and perception to
reach a conclusion as to characteristic or feature of the goods
in connection with which the phrase is used. Moreover, while
there is no evidence that the phrase "SIDE GRIPPING ACTION" is
commonly used in the trade for golf shoe cleats, it nonetheless
is well settled that the fact that an applicant may be the first
and/or sole user of a merely descriptive phrase does not entitle
it to registration thereof where, as here, the phrase projects
only a merely descriptive significance in the context of
applicant's goods. See, e.g., In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In re Mark
A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972). In a similar
vein, it is well established that the fact that a phrase is not
found in the dictionary is not controlling on the question of
registrability. See, e.g., In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987); and In re Orleans
Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977).
Turning to the remaining basis for refusal, we note
that, as stated by the Court in In re Bose Corp., 546 F.2d 893,
192 USPQ 213, 215 (CCPA 1976): "The Trademark Act is not an act
to register mere words, but rather to register trademarks.
Before there can be registration, there must be a trademark, and
unless words have been so used they cannot qualify. In re
Standard Oil Co., 47 CCPA 829, 275 F.2d 945, 125 USPQ 227
Ser. No. 75554047
8
(1960)."3 The court, noting that "the classic function of a
trademark is to point out distinctively the origin of the goods
to which it is attached," further indicated that (footnote
omitted):
An important function of specimens in a
trademark application is, manifestly, to
enable the PTO to verify the statements made
in the application regarding trademark use.
In this regard, the manner in which an
applicant has employed the asserted mark, as
evidenced by the specimens of record, must be
carefully considered in determining whether
the asserted mark has been used as a
trademark with respect to the goods named in
the application.
Id. at 215-16. Moreover, as pointed out by the Board in In re
Remington Products, Inc., 3 USPQ2d 1714, 1715 (TTAB 1987):
[T]he mere fact that [an] applicant's
slogan [or phrase] appears on the specimens,
even separate and apart from any other
indicia which appear on them, does not make
it a trademark. To be a mark, the term, or
slogan, must be used in a manner calculated
to project to purchasers or potential
purchasers a single source or origin for the
goods in question. Mere intent that a term
function as a trademark is not enough in and
of itself, any more than attachment of the
trademark symbol would be, to make a term a
trademark.
A critical element in determining
whether a term is a trademark is the
impression the term makes on the relevant
public. In this case, the inquiry becomes
would the term be perceived as a source
indicator or merely an informational slogan
[or phrase]?
3 In this regard, Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines the term "trademark" in relevant part as including "any word,
name, symbol, or device, or any combination thereof ... used by a
person ... to identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others and to
indicate the source of the goods, even if that source is unknown."
Ser. No. 75554047
9
Applicant argues, in its supplemental brief, that the
"submitted specimen is in the form of point-of-sale advertising
and was a printout of an internet page." Such advertising,
applicant submits, "constitutes use in commerce within the
meaning of the statute." However, the Internet-page specimen,
which applicant submitted with the intention that it serve as a
substitute for the specimen originally filed with its amendment
to allege use, has not been properly verified (see footnote 2)
and thus cannot be treated as a substitute specimen.4 Rather,
the only specimen which is properly before us and which forms the
basis for the refusal to register consists, as indicated
previously, of a photocopy of an advertisement for applicant's
goods which contains, beneath the prominently displayed (in bold
type) heading "The number one spike on the Senior PGA Tour," the
following paragraph of text:
Green Keepers Spikeless cleats took over
as the No. 1 spike on the Senior PGA Tour at
the PGA Seniors' Championship. .... Green
Keepers' offers aggressive outward-angle
traction teeth which provide lateral
stability during play and side-gripping
action on uneven terrain.
None of the words in such text, including the hyphenated phrase
"side-gripping action," is set-off or otherwise differentiated
4 It appears that applicant was attempting to overcome the additional
objection to the originally filed specimen. Specifically, as stated
in the final refusal, objection was made to such specimen on the
further ground that it was "unacceptable as evidence of actual
trademark use because [it] is merely promotional literature."
However, on appeal, the Examining Attorney has not maintained the
objection as to the nature of the originally filed specimen; instead,
the sole basis argued in her brief is that, as used therein, the
phrase which applicant seeks to register fails to function as a mark
for applicant's goods.
Ser. No. 75554047
10
from any of the other words therein; instead, all of the wording
appears in the same size of type (except for capital letters,
which are slightly larger) and style.
We agree with the Examining Attorney that the specimen
originally filed with the amendment to allege use fails to show
that the phrase "SIDE GRIPPING ACTION" functions as a trademark
to identify and distinguish applicant's goods. Leaving aside the
matter of the presence of a hyphen therein, it is still the case
that, rather than being used in a manner calculated to project to
consumers a single source or origin for applicant's golf shoe
cleats, the phrase "SIDE GRIPPING ACTION" is buried in the text
of the advertising for such goods. As so used, the impression
made by the phrase on the purchasing public is simply that of an
informational or descriptive statement about a characteristic or
feature of applicant's goods and, thus, it would not be perceived
as an indicator of source.5
Decision: The refusals under Section 2(e)(1) and
Sections 1, 2 and 45 are affirmed.
5 We hasten to add that, since the same is true with respect to the
Internet-page which applicant attempted to submit as a substitute
specimen, the result herein would be the same even if applicant had
furnished proper verification of such specimen as required by
Trademark Rule 2.59(b)(1).