Janet Wetstone

Trademark Trial and Appeal Board

Jul 21, 2000

No. 75032568 (T.T.A.B. Jul. 21, 2000)

Paper No. 17
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 21, 00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Janet Wetstone
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Serial No. 75/032,568
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James W. Hellwege of Jones, Tullar & Cooper, P.C. for
Janet Wetstone.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
114 (Mary Frances Bruce, Managing Attorney).
_______
Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 14, 1995, applicant applied to register
the mark “POTTERY-POWDER” on the Principal Register for
“hydraulically settable powder for use in hobby crafts and
molds,” in Class 19. The application was based on
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with
these goods.
Ser No. 75/032,568
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The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
proposed mark is merely descriptive of the goods set forth
in the application. He also required amendment to clarify
the identification-of-goods clause in the application and
noted other informalities which required applicant’s
attention.
Applicant responded to the first Office Action by
amending the identification-of-goods clause to read
“hydraulically settable powder for use in making items
shaped in hobby casts and molds,” in Class 16. Other
informalities were resolved, and applicant provided
argument that the refusal based on descriptiveness was
improper.
In addition to its original response, applicant
followed up a week later by providing a brochure featuring
applicant’s products. The Examining Attorney had requested
one in the first Office Action. Actually, to be more
accurate, the four-page exhibit appears to be an
instruction sheet for producing a “FRAME-A-LOT” frame by
using a mold, into which a solution which has the
consistency of cream is poured. Then the solution is
allowed to cure, the mold is removed, and further
Ser No. 75/032,568
3
instructions describe ways to decorate and use the frames
so created.
Every time the term “POTTERY-POWDER” is used in
applicant’s brochure, it is used as the name for the powder
with which water is mixed in order to form the liquid
material which is to be poured into the mold. At the
beginning of the brochure, when applicant is listing the
various “Materials Needed,” it lists “POTTERY-POWDER” as
one of the necessary items. Step four of the instructions
directs the user to “Measure POTTERY-POWDER and sprinkle
into water; let stand until saturated, one or two minutes,
then gently mix until it reaches the consistency of cream.”
In the instruction regarding “removing castings from mold,”
the brochure advises that “self-baking POTTERY-POWDER will
become warm and must be allowed to cool before removing
from the mold.” Under the section labeled “Embedding,”
“POTTERY-POWDER” is again listed as one of the “materials
needed,” along with tweezers, toothbrush, damp sand and
other items. The reader is instructed to “Mix POTTERY-
POWDER as directed in the basic instructions…” and to “pour
POTTERY-POWDER mixture over shells…” Then the instructions
advise that “The POTTERY-POWDER will settle around the
exposed portions of the shells and hold them securely in
the finished frame.”
Ser No. 75/032,568
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Not surprisingly, the Examining Attorney was not
persuaded by these examples of applicant’s own use of the
term that the term sought to be registered is not merely
descriptive of them. With his second Office Action, he
maintained and made final the refusal to register under
Section 2(e)(1) of the Act. Included with the final
refusal were excerpts retrieved from seven patents. Each
excerpt shows the use of the term “pottery powder,” but
none of these examples shows the term used in a clear
reference to powder used for making molded and cast hobby
items such as pottery.
Applicant responded by amending the application to
seek registration of the term on the Supplemental Register.
Responsive to the amendment, the Examining Attorney refused
registration on the Supplemental Register under Section 23
of the Act, on the ground that the proposed mark is generic
for the goods set forth in the application, and therefore
is incapable of identifying applicant’s goods and
distinguishing them from similar products produced by
others. Attached to this refusal were a number of excerpts
from published articles retrieved from the Nexis database
wherein the term “pottery powder” is used. Once again,
however, none of this evidence appears to provide a clear
Ser No. 75/032,568
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example of use of the term sought to be registered as the
generic name for applicant’s product.
Applicant filed a response to the refusal to register
the mark on the Supplemental Register, but the Examining
Attorney responded by making that refusal final under
Section 23 of the Act. He argued that the fact that the
cited references do not refer specifically to hydraulically
settable powder for use in making pottery does not obviate
the generic character of the mark, which can be ascertained
by reference to the ordinary meanings of the words which
are combined to form this composite term. Further, he
pointed out that registration on the Supplemental Register
is not appropriate prior to the filing of an acceptable
amendment to allege use.
Still more excerpts from published articles were
included with this final refusal, but these excerpts do not
show the term sought to be registered used generically in
reference to the goods identified in the application.
Instead, they show that “powders” are apparently used to
burnish or glaze pottery, and that researchers sometimes
scrape away samples of ancient pottery, crush them and
analyze the resulting powder to determine the material
composition of such archeological discoveries.
Ser No. 75/032,568
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Applicant filed a notice of appeal, but the Board
pointed out that the refusal of registration based on the
lack of acceptable amendment to allege use had only been
made one time prior to the notice of appeal. Accordingly,
the issuance of the final refusal to register on the
Supplemental Register was premature, and the notice of
appeal could not be entertained at that time.
The file was forwarded to the Examining attorney for
appropriate action. He issued another Office Action,
making the refusal of registration under Section 2(e)(1)
final and making the refusal to register on the
Supplemental Register final on two grounds, namely that the
term sought to be registered is incapable of identifying
applicant’s goods and distinguishing them from those made
by others, and that whereas use is a prerequisite to
registration on the Supplemental Register, applicant had
not submitted an amendment to allege use. Additional
excerpts from published articles were appended to this
Office Action in an attempt to show that pottery is
commonly made from powders shaped in casts and molds. The
various excerpts discuss pottery molds for a variety of
goods.
Next, applicant filed an amendment to allege use of
the term as a mark in interstate commerce in connection
Ser No. 75/032,568
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with the specified goods at least as early as March 5,
1999. The required specimens of use of the mark appear to
be copies of labels for containers for the goods. Although
the heading of the label arguably uses the term as a
trademark, further down the label is the following warning:
“Caution: Do not put pottery-powder in drain.”
The Examining Attorney then accepted the amendment to
allege use, but maintained the refusals of registration
under Lanham Act Section 23. Applicant filed a timely
appeal brief and the Examining Attorney filed his
responsive brief, but applicant did not request an oral
hearing before the Board. Accordingly, we have resolved
this appeal on its merits based upon the written arguments
and materials of record in the application.
After careful consideration of these materials in
conjunction with the statute and applicable precedent on
these issues, we find that the refusals of record are
appropriate because the term applicant seeks to register is
generic for powder which is mixed with water and used to
make pottery.
A term is unregistrable on the Supplemental Register
if it is understood by the relevant purchasing public as a
designation which refers to the class of goods or services
set forth in the application. H. Marvin Ginn Corp. v.
Ser No. 75/032,568
8
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). A combination of
generic terms that has no separate or distinct commercial
impression (i.e., apart from that which one who understands
the individual meanings of the component terms would expect
the combination to mean) is a generic term, incapable of
serving as a source identifier, and therefore
unregistrable, even on the Supplemental Register. In re
Lowrance Electronics, Inc., 14 USPQ2d 1251 (TTAB 1989). A
composite term can be generic without being defined in the
dictionary or used by others as a composite term, if the
term, as a whole, has no more meaning than the sum of the
meanings of each of its constituent parts. In re Gould
Paper Corp., 835 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
In In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999), our principal reviewing
court, in discussing the Gould case, made it clear that its
decision there was limited to compound terms formed by the
union of words. The compound term found to be generic in
that case was "SCREENWIPE," whereas in American Fertility
Society, the term the court found not to be generic was
"SOCIETY FOR REPRODUCTIVE MEDICINE," which the court held
is a phrase consisting of multiple terms which were not
joined in any sense other than appearing together as a
Ser No. 75/032,568
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phrase. The court reconciled its decision in American
Fertility Society with Gould by emphasizing that in both
instances, the test remained as enunciated in the Ginn
opinion.
In the case at hand, we therefore turn to application
of that test. The type or class of goods at issue in the
instant case is powders for use in making items shaped in
casts or molds by hobbyists. The commonly understood
meanings of the words “POTTERY” and “POWDER” support the
conclusion that ordinary consumers of craft or hobby kits
of the type described in applicant’s brochure would
understand that the combination of these two words,
“pottery” and “powder,” or its equivalent, “POTTERY-
POWDER,” is the name for the type of powder used to make
pottery. This situation is analogous to the one in Gould
because "POTTERY-POWDER" is a compound term, rather than a
phrase consisting of multiple terms, as in the American
Fertility Society case.
Applicant contends that the Examining Attorney has not
met his burden of establishing the generic nature of the
term sought to be registered because none of the materials
submitted in support of the refusal to register shows the
combined term used as the name for powder which, when
Ser No. 75/032,568
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hydrated, becomes the plaster which is poured into the
pottery mold.
While applicant may be correct in assessing the
evidence submitted by the Examining Attorney, just as in
Gould, where the ordinary meanings of the words "screen"
and "wipe" led the court to conclude that the compound word
"SCREENWIPE" is a generic term, in the case at hand, the
ordinary meanings of "pottery" and "powder" lead us to
conclude that "POTTERY-POWDER" would be understood by the
relevant purchasing public to refer to the genus of goods
set forth in this application.
The evidence of applicant's own use of "POTTERY-
POWDER" is not inconsistent with this conclusion. That she
uses the term as a noun, rather than as an adjective, is
not persuasive evidence that the term sought to be
registered is likely to be perceived by purchasers of these
products as an indication of source.
In summary, consistent with the court's analysis
in the Gould decision, supra, we find the term applicant
seeks to register here is generic, and hence incapable of
identifying applicant's goods and distinguishing them from
similar products produced by others. Under these
circumstances, registration on the Supplemental Register is
clearly not permitted under Section Section 23 of the Act.
Ser No. 75/032,568
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Accordingly, the refusal to register is affirmed.
R. F. Cissel
T. J. Quinn
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 75/032,568
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