Jeffrey R. Belanoff

Trademark Trial and Appeal Board

Apr 30, 2004

No. 78022004 (T.T.A.B. Apr. 30, 2004)

Mailed: April 30, 2004
Paper No. 12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Belanoff
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Serial No. 78022004
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Jeffrey R. Belanoff, pro se.
John M. Gartner, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Jeffrey R. Belanoff, a citizen of the United States,
has filed an application to register the term "SUPERSURVEYS" as a
service mark for "conducting public opinion polls and surveys for
non-business, non-marketing purposes."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 services,
the term "SUPERSURVEYS" is merely descriptive thereof.
1 Ser. No. 78022004, filed on August 20, 2000, which is based on an
allegation of a bona fide intention to use such term in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76022004
2
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a 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 (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 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 term
describes a significant attribute or idea about them. Moreover,
whether a 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
2 The Examining Attorney, noting that the "TABLE OF CITED AUTHORITIES"
in applicant's brief sets forth a list which includes various third-
party registrations which were not made of record by applicant's
having previously submitted copies thereof, has properly objected in
his brief to consideration of such evidence on the ground that it is
untimely under Trademark Rule 2.142(d). In addition, the Examining
Attorney, citing In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974),
correctly notes that inasmuch as the Board does not take judicial
notice of third-party registrations, a mere list of such does not
suffice to make the registrations of record; rather, copies of the
registrations or printouts thereof from the electronic search records
of the United States Patent and Trademark Office must be timely
furnished. While no consideration will be given to evidence which has
not been properly made of record, it is nonetheless pointed out that,
even if such evidence were to be considered, it would make no
difference in the disposition of the issue of mere descriptiveness.
Ser. No. 76022004
3
services and the possible significance that the term 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, in his response to the initial Office
Action, conceded with respect to the term "SUPERSURVEYS" that,
"[w]hen broken down to its components, 'super' and 'surveys,' and
taken by the summation of their literal definitions, this mark
does seem merely descriptive" of his services. Applicant added
that "[i]t is not my intention, however, to define or advertise
my surveys as a superlative or laudatory phrase" and that, while
"I hope my products will be thought of in the superlative, ...
this is not what I mean by the name." Instead, as argued in his
brief, applicant contends that the term "SUPERSURVEYS" "is not
merely descriptive of his services because, inter alia, such term
"is submitted intentionally as a unitary mark, not intended to be
considered in its component form," which combines the words
"SUPER" and "SURVEYS" in a manner that their "juxtaposition ...
is inventive or evokes a unique commercial impression"; that, in
light of the multiplicity of meanings for the words comprising
the term "SUPERSURVEYS," it is the case that "[m]ultiple
impressions and entendres can be demonstrated depending on
context and the individual's point of view"; that, as shown by
various third-party registrations, marks which are comprised of
Ser. No. 76022004
4
the formative term "SUPER" and another word "constitute some
evidence of record or reasonable precedent" that the term
"SUPERSURVEYS" should likewise be regarded as registrable; and
that, in particular, the "alliterative nature" of such term
"lend[s] a unique, distinct and memorable quality to the term."
The Examining Attorney, citing the definitions of
record from The American Heritage Dictionary of the English
Language (3rd ed. 1996) of the prefix "SUPER-" as signifying
"[s]uperior in size, quality, number or degree" and the word
"SURVEY" as meaning "[t]o conduct a statistical survey on,"
contends in his brief that:
The examining attorney disputes
applicant's claim that the examining attorney
failed to view applicant's mark as a whole in
finding that the mark was merely descriptive
of the services. In this case, SURVEYS is
clearly the generic name for applicant's
survey services, and applicant has not
disputed this. The word SUPER, as used by
applicant, can only be reasonably viewed as
conveying the meaning ... [of] a prefix
meaning "superior in size, quality, number,
or degree." As such, the term is used in a
laudatory manner. Laudatory terms, those
that attribute quality or excellence to goods
or services, are merely descriptive under
§2(e)(1). [citations omitted.] Having
concluded that SUPER is a laudatory term and
that SURVEYS is the generic term for the
services, the Examining Attorney combined the
terms as SUPERSURVEYS to judge the mark as a
whole. It was only then, viewing the mark as
the entire mark SUPERSURVEYS, that the
examining attorney concluded that the mark
merely describes the services. This
conclusion was based on the fact that
SUPERSURVEYS, as a combined mark, does not
convey a commercial impression that is
separate from the descriptive impression
created by the individual words SUPER and
SURVEYS.
Ser. No. 76022004
5
We agree with the Examining Attorney that the term
"SUPERSURVEYS" is merely descriptive of applicant's services.
Such term immediately describes, without any conjecture or
speculation, the conducting of public opinion polls and surveys
for non-business, non-marketing purposes which are superior in
quality or degree. Nothing in the term "SUPERSURVEYS," when used
in connection with applicant's services, requires the exercise of
imagination, cogitation or mental processing or necessitates the
gathering of further information in order for the merely
descriptive significance thereof to be readily apparent.
Plainly, the individual terms comprising the term "SUPERSURVEYS"
have a meaning when combined which ordinary usage would ascribe
to those terms in combination, and the fact that applicant
insists that "it is a new compound word" which presumably does
not appear in any dictionary is simply not controlling on the
question of registrability. See In re Gould Paper Corp., 824
F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) and In re Orleans
Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977).
Admittedly, it is possible, as applicant argues and the
Examining Attorney acknowledges, for individually descriptive
words to be combined to form a valid, registrable mark which, as
a whole, is not merely descriptive. Specifically, as set forth,
for instance, in TMEP Section 1209.03(d) (3d ed. 2d rev. May
2003):
When two descriptive terms are combined,
the determination of whether the composite
mark also has a descriptive significance
turns upon the question of whether the
combination of terms evokes a new and unique
commercial impression. If each component
Ser. No. 76022004
6
retains its descriptive significance in
relation to the goods or services, the
combination results in a composite that is
itself descriptive. In re Tower Tech, Inc.,
64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely
descriptive of "commercial and industrial
cooling towers and accessories therefor, sold
as a unit"); In re Sun Microsystems Inc., 59
USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer software for use in
development and deployment of application
programs on global computer network); In re
Putman Publishing Co., 39 USPQ2d 2021 (TTAB
1996) (FOOD & BEVERAGE ONLINE held to be
merely descriptive of news and information
service for the food processing industry);
... In re Entenmann’s Inc., 15 USPQ2d 1750
(TTAB 1990), aff’d per curiam, 928 F.2d 411
(Fed. Cir. 1991) (OATNUT held to be merely
descriptive of bread containing oats and
hazelnuts); ... In re Wells Fargo & Co., 231
USPQ 95 (TTAB 1986) (EXPRESSERVICE held to be
merely descriptive of banking and trust
services); In re Uniroyal, Inc., 215 USPQ 716
(TTAB 1982) (STEELGLAS BELTED RADIAL held
merely descriptive of vehicle tires
containing steel and glass belts); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979)
(COASTER-CARDS held merely descriptive of
coasters suitable for direct mailing).
However, a mark comprising a combination
of merely descriptive components is
registrable if the combination of terms
creates a unitary mark with a unique,
nondescriptive meaning, or if the composite
has a bizarre or incongruous meaning as
applied to the goods [or services]. See In
re Colonial Stores Inc., 394 F.2d 549, 157
USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held
not merely descriptive of bakery products)
....
While we note, in the present case, applicant's
assertions concerning the differences in connotation between such
examples as "super man" and "Superman," "super bowl" and
"Superbowl," and "super market" and "supermarket," the Examining
Attorney counters by insisting that "Superman" and "Superbowl"
are terms which, in addition to having "nothing whatsoever to do
Ser. No. 76022004
7
with applicant's mark or applicant's services," "developed
meanings over time that are distinct from the terms 'super man'
and 'super bowl'" and that the word "supermarket," being "a
generic term ..., hinders rather than helps applicant's
argument." Suffice it to say that, as indicated above, we cannot
discern any difference in commercial impression between "SUPER
SURVEYS" as two separate words and their combination into the
term "SUPERSURVEYS." In the latter case, no new and unique
commercial impression is created inasmuch as nothing in the
combination results in a unitary mark with a unique,
nondescriptive meaning, nor does the composite have a bizarre or
incongruous meaning as applied to applicant's services. Rather,
the constituent elements retain their descriptive significance
and the combination is itself merely descriptive of applicant's
services.
Nonetheless, citing such sources as "The American
Heritage Dictionary, Cassell's Concise English Dictionary and
Dictionary.com," applicant maintains that (footnotes omitted):
Super is also defined as, "a
superintendent in an apartment or office
building" or "an extra or superfluous person,
a supernumerary (theatrical performer without
a speaking part)" or "superfine cloth or
manufacturer" or, as a prefix, "placement
above, over or outside". Survey is also
defined as, "to determine the form, extent,
position, etc. of" or "to ascertain the
condition, value, etc. of" or "a department
carrying this out" or "a general view".
Applicant argues that "[t]hese additional definitions and their
possible combinations suggest many possibilities and unique
interpretations of what 'supersurveys' might mean," such as
Ser. No. 76022004
8
surveys about or conducted by either school superintendents or
building superintendents, "a survey of chorus, cast members or
understudies regarding their performances or the performances of
featured players" or "a public opinion poll regarding particular
clothing or fabrics."
We concur with the Examining Attorney, however, that
when encountered in the context of applicant's services of
conducting public opinion polls and surveys for non-business,
non-marketing purposes," there simply is "no evidence in the
record to suggest that applicant's polls or surveys have anything
whatsoever to do with superintendents, and there is no evidence
to suggest that applicant's customers would view ... SUPERSURVEYS
as referring to superintendents or anything other than surveys
that are 'super'" in the ordinary sense that they are superior in
quality or degree. The term "SUPERSURVEYS" is thus merely
descriptive of applicant's services in that it forthwith conveys,
in a laudatory manner, that it is the services which are superior
rather than designating the subject matter or topic of the
surveys or polls being conducted, such as school or building
superintendents, theatrical extras or even superfine cloth or
manufacturers.
As to applicant's reliance on various third-party
registrations, which he properly made of record, of marks which
contain the word "SUPER" or another laudatory term,3 the
3 Such registrations are for the following marks and associated goods
or services: "BEST FRIEND" for "restaurant, inn, hotel and motel
services"; "BEST CARE" for "catalog mail order services in the field
of pet health care"; "SUPERSUIT" (issued pursuant to Section 2(f) of
Ser. No. 76022004
9
Examining Attorney, citing In re Scholastic Testing Service,
Inc., 196 USPQ 517, 519 (TTAB 1977), correctly notes that each
case must be decided on its own merits and that "[a] mark which
is merely descriptive is not registrable merely because other
similar marks appear on the register." See, e.g., In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) ["Even if some prior registrations had some characteristics
similar to [applicant's] application, the PTO's allowance of such
prior registrations does not bind the Board or this court"]; In
re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 (TTAB
2001); and In re Pennzoil Products Co., 20 USQP2d 1753, 1758
(TTAB 1991). In any event, to the extent that they may be
considered probative, none of the third-party registrations of
record is persuasive of a contrary finding in this case, nor do
the Trademark Act, 15 U.S.C. §1052(f)) for "clothing--namely, weight-
lifting suits and power lifting suits"; "SUPERSAVER" for "paint
brushes and paint rollers"; "SUPERSET" for "modified and unmodified
food starches for industrial use"; "SUPERSPIN" for computer programs
for freight carrier management and forecasting"; "SUPERSTREAK" for
"shuttle units for use with automated manufacturing machines for
conveying components during different stages of manufacture and, in
particular, for use in automotive manufacturing facilities"; "SUPER
CYCLE" ("CYCLE" disclaimed) for "a controller ... for use with
industrial air conditioning units having a cooling tower and a
refrigerating unit"; "SUPER SMILE" for "toothpaste"; "SUPER SMOKE"
("SMOKE" disclaimed) for "cheese"; "SUPER SHIELD" for "ophthalmic
lenses"; "SUPER SHIPPER" for "molded plastic industrial drums"; "SUPER
STONE" for, inter alia, "bricks for baking and warming foods such as
pizzas" and "covered stoneware baking dishes"; "SUPER SIPPER" for
"laboratory equipment--namely, apparatus for introducing a liquid test
sample into an analytical instrument"; and "SUPER SEAL" (issued on the
Supplemental Register with "SEAL" disclaimed) for "vehicle rust
preventative and undercoating sealer." It is pointed out, however,
that the probative value of several of such registrations is limited
inasmuch as the copies thereof which applicant submitted from Office
records provide only partial information and thus, for example, do not
indicate whether a term in the subject mark has been disclaimed or
whether the registration issued either on the Principal Register,
pursuant to a claim of acquired distinctiveness under Section 2(f) of
the statute, or on the Supplemental Register.
Ser. No. 76022004
10
they singly or collectively serve to create any doubt as to the
mere descriptiveness of the term "SUPERSURVEYS" when used in
connection with applicant's intended services. At most, what
such registrations tend to show is that, when a laudatory term is
coupled with an apparently suggestive word, the resulting mark is
considered to be suggestive (e.g., "SUPERSAVER" for "paint
brushes and paint rollers" or "SUPER SMILE" for "toothpaste"),
but when such a term is combined with a word which clearly is
descriptive or generic, the composite mark is regarded as merely
descriptive (e.g., "SUPER SEAL" for "vehicle rust preventative
and undercoating sealer" or "SUPERSUIT" for "clothing--namely,
weight-lifting suits and power lifting suits"). Thus, like those
composite marks in the latter category, the term "SUPERSURVEYS"
combines the laudatory word "SUPER" with the descriptive, if not
generic, term "SURVEYS" in such a manner that, for the reasons
explained previously, the combination is merely descriptive of
applicant's services.
Applicant, however, insists as a final consideration
that the term "SUPERSURVEYS" creates a separate, non-descriptive
commercial impression because it has "a neat, concise and classic
alliteration with not only a triple repeating consonant 's' sound
but also an embedded duplicative 'su' sound." Such alliterative
sounds, applicant urges, "create a pleasing pattern which lend a
unique, distinct and memorable quality to the term."
The Examining Attorney, on the other hand, persuasively
maintains that:
In this case, there is nothing about the
alliteration or sound quality of applicant's
Ser. No. 76022004
11
mark that creates a distinct commercial
impression. Instead, the laudatory term
SUPER happens to begin with the same two
letters as the generic term SURVEYS. The
examining attorney notes that the "U" sound
in each [constituent] word is different, with
SUPER having a long "U" sound and SURVEYS a
short "U" sound, so the "alliteration"
applies only to the "S" and not the "U."
This alliteration, by itself, ... is simply
not enough to create in the minds of
applicant's consumers the impression that the
words [comprising the term] SUPERSURVEYS form
a distinct mark rather than a descriptive
phrase. Compare In re Lean Line, Inc., 229
USPQ 781, 782 (TTAB 1986) (LEAN LINE not
considered unitary; "there is nothing in the
record to suggest that the mere fact that
both words which form the mark begin with the
letter 'L' would cause purchasers to miss the
merely descriptive significance of the term
'LEAN' or consider the entire mark to be a
unitary expression.")
Accordingly, we conclude that when used in connection
with applicant's services of "conducting public opinion polls and
surveys for non-business, non-marketing purposes," the term
"SUPERSURVEYS" in its entirety immediately conveys information
that applicant's surveys are superior in quality or degree. Such
term, therefore, is merely descriptive of applicant's services
within the meaning of the statute. See, e.g., Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361,
363 (CCPA 1972) ["SUPER BLEND" held merely descriptive of "motor
oils" as designating "an allegedly superior blend of oils"]; In
re Consolidated Cigar Co., 35 USPQ2d 1290, 1293-94 (TTAB 1995)
["SUPER BUY" found laudatory and hence merely descriptive of
"cigars, pipe tobacco, chewing tobacco and snuff" inasmuch as
term "ascribes a quality of superior value to the goods," in that
they "are an exceptionally high value for their price," and is
Ser. No. 76022004
12
"an expression of pre-eminence, analogous to a grade
designation"]; In re Carter-Wallace, Inc., 222 USPQ 729, 730
(TTAB 1984) ["SUPER GEL" held merely descriptive of a "lathering
gel for shaving" because term "would be perceived as nothing more
than the name of the goods modified by a laudatory adjective
indicating the superior quality of applicant's shaving gel"]; and
In re Samuel Moore & Co., 195 USPQ 237, 241 (TTAB 1977)
["SUPERHOSE!" found merely descriptive of "hydraulic hose made of
synthetic resinous materials" inasmuch as term "would be
understood as the name of the goods modified by a laudatory
adjective which would be taken to mean that applicant's hose is
of superior quality or strength"].
Decision: The refusal under Section 2(e)(1) is
affirmed.