Hannan Products Corp.

Trademark Trial and Appeal Board

May 30, 2014

No. 85442708 (T.T.A.B. May. 30, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hannan Products Corp.
________

Serial No. 85442708
_______

Kenneth L. Mitchell of Woodling Krost and Rust for Hannan Products Corp.

Helene Liwinski, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_______

Before Cataldo, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Hannan Products Corp. (“Applicant”) filed an application to register as
a mark on the Principal Register the term DIAMOND (in standard
characters) for “paper cutting machine parts, namely, steel rule dies for
cutting paper products” (International Class 7).1
The Trademark Examining Attorney issued a final refusal of
registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85422708, filed October 7, 2011, based upon applicant’s
assertion of its bona fide intent to use the mark in commerce.
Ex Parte Appeal No. 85442708

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§ 1052(e)(1), on the ground that applicant’s proposed mark, when used in
connection with Applicant’s goods, is merely descriptive thereof. Applicant
appealed. Applicant and the examining attorney filed briefs.
Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or services, within
the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the
goods or services. In re Chamber of Commerce of the United States of
America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A
mark need not immediately convey an idea of each and every specific feature
of the applicant’s goods or services in order to be considered merely
descriptive; rather, it is sufficient that the mark describes one significant
attribute, function or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973).
It is further settled that whether a mark 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 on or in
connection with the goods or services, and the possible significance that the
mark would have to the average purchaser of the goods or services because of
Ex Parte Appeal No. 85442708

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the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). “The question is not whether someone presented with only the mark
could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods or services are will understand the mark
to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
With its August 1, 2012 communication, Applicant submitted
screenshots from its internet website (www.hannanpak.com) containing the
following information:
HANNAN® manufactures a variety of steel rule dies for cutting,
creasing, scoring, and trimming applications. The most
economical choice is usually a HANNAN® “standard” steel rule
die. These are available in popular sizes designed for minimum
waste when cutting standard material. Custom dies can also be
manufactured to your specifications.
Our steel rule dies are made with 3pt. Steel Rule, the highest
quality multi-ply die board, and precision metal backup
materials. HANNAN® routinely manufactures custom steel rule
dies for a wide variety of applications. We manufacture dies for
die cutting applications using cardboard for boxes and displays,
foam, rubber, gasket material, and of course card stock for skin
and blister packaging.

In support of the refusal to register, the Examining Attorney
submitted an “English Worldwide” dictionary definition of the word
“diamond” obtained from the online version of Collins dictionary
(www.collinsdictionary.com). The Collins dictionary, while in the English
language, is published in Glasgow, Scotland and the definition itself clearly
pertains to varieties of British English, notwithstanding that the website also
Ex Parte Appeal No. 85442708

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provides an option for “American” English definitions. In the absence of
evidence of exposure to U.S. consumers, the “English Worldwide” definition is
of little or no probative value.
The Examining Attorney further made of record with her Office actions
evidence from commercial and informational internet websites in which
“diamond” is used to describe one of many shapes cut by steel dies. The
following examples are illustrative:
Die Cut Shapes
Die cuts are shapes, letters and numbers cut from pieces of
cardstock or construction paper using a die cut machine. They
can be used for library programs, bookmarks, bulletin boards
and more. …
Shape
Diary (Food Group)
Daisy
Daisy #2
Desk Plate/Plain
Detective Hat
Diamond
Dinosaur – Brontosaurus …
(www.statelibraryofiowa.org);

Custom Shape Pros builds custom steel-rule dies for commercial
or personal use in a variety of applications – printing and
packaging, consumer goods, paper and fabric crafts, prototypes
and more. …
What Our Customers Have to Say
I absolutely LOVE diamonds! No, not the sparkly, expensive,
gem kind – the shape. I own most of AccuCut’s diamond shapes
in their standard dies, but when I started to design scrapbook
pages for our business, I decided I needed my own diamonds. So,
I designed a background of diamonds. Then I decided I needed
another background of diamonds. …
(www.customshapepros.com);

Ellison® Prestige® SureCut™ Die, Math, Large, Diamond
Cuts as many as 5 pieces of paper at once.
Ex Parte Appeal No. 85442708

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Measuring 4 7/8” x 5 7/8”, die creates larger shapes that
demonstrate basic math principles to advanced problem-solving.
Laser-accurate steel-rule is precisely placed to ensure optimal
cutting performance.
(www.officedepot.com);

Custom Dies Easy as… 1. 2. 3.
Ellison Die Cutting Machine
We have an Ellison machine and dies available for your use! The
Ellison machine does the cutting for you! …
Crown border
Cup & Saucer XL
Diamond
Dinosaur BB
Dog/Scottie …
(www.ellison.com);

Nesting Dies
Nesting Diamond Die
Useful for frames, patterns, windows, argyle or even folded into
pennants – this set of dies won’t be collecting dust anytime soon.
(www.lifestylecrafts.com).

Based upon the internet evidence submitted by the Examining
Attorney, it is clear that steel dies such as Applicant’s “paper cutting machine
parts, namely, steel rule dies for cutting paper products” may be used to cut a
variety of shapes, including diamonds and patterns in the shape of a
diamond. The evidence of record further establishes that the term “diamond”
is used by third parties to describe one of the many shapes that may be cut
into paper and other products using steel rule dies such as those identified in
the subject application. In its brief on appeal (p. 2) Applicant acknowledges
that its “steel rule dies are not limited to any particular shape, and they can
be any imaginable shape.” Thus, Applicant acknowledges that its goods may
be used to cut diamond shapes, among others. In view of the evidence of
Ex Parte Appeal No. 85442708

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record, including any evidence not specifically discussed herein, we find that
the term DIAMOND “immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services with which it is used.” In
re Bayer Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay, 820 F.2d
1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987).
Decision: The refusal to register is affirmed.