JPI Colorwork-shop, Inc.

Trademark Trial and Appeal Board

Jul 26, 2005

No. 78107577 (T.T.A.B. Jul. 26, 2005)

Mailed: July 26, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JPI Colorworkshop, Inc.
________

Serial No. 78107577
_______

Larry B. Miller of Feder, Kaszovitz, Isaacson, Weber, Skala, Bass
& Rhine, LLP for JPI Colorworkshop, Inc.

Laura G. Kovalsky, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Hohein and Walsh, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

JPI Colorworkshop, Inc., by an assignment from P&M
Products Ltd., is the owner of an application which has been
filed to register the term "STRIPE WRITER" on the Principal
Register for "pens, namely[,] coloring pens, writing pens,
drawing pens and felt tip markers" in International Class 16.1
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
term "STRIPE WRITER" is merely descriptive thereof.

1 Ser. No. 78107577, filed on February 8, 2002, 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. 78107577
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse 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, 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 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).

Ser. No. 78107577
3
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992); and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
Applicant, while notably not citing to any specific
dictionary, asserts in its initial brief that "the mark STRIPE
WRITER is suggestive of Applicant's products, arguing that:
The word "writer" ... [is] a noun formed from
the verb to write, which in most dictionaries
is defined as forming letters, words or
symbols or numbers on a surface such as paper
with an instrument such as a pen. The word
["]stripe["] on the other hand has long been
defined as a long narrow band distinguished
as by color or texture from the surrounding
material or surface; a textile pattern of
parallel bands or lines on a contrasting
cloth or braid, etc. No native speaker of
English would refer to writing stripes,
unless using the words tropically. Indeed,
the incongruity of the combination of the
words "stripe" and "writer" is such that
Ser. No. 78107577
4
prospective purchasers would be forced to
pause and reflect on the significance of the
combined term "STRIPE WRITER" in order to
impart any meaning to the combination as
applied to pens, so that they would recognize
the words STRIPE WRITER as the source of the
goods and not as describing any ingredient,
quality, characteristic, feature, function,
purpose or use of the product. ....

....

Here the Examining Attorney cannot point
to anything in the goods ... that would show
this compound mark as descriptive of the
products. .... There is absolutely no
evidence with any degree of certainty that
the proposed mark forthwith conveys an
immediate idea of the subject matter or any
quality, characteristic, function or feature
of Applicant's products; and the linguistic
analysis above weighs against such a
probability. ....

Applicant adds, however, that any doubt as to whether its mark is
suggestive instead of merely descriptive should be resolved in
its favor.
The Examining Attorney, on the other hand, contends in
her brief that there is evidence which supports "finding the
proposed mark [is] merely descriptive of the 'pens' and 'markers'
identified in the application." Specifically, the Examining
Attorney notes that the record shows that (emphasis in original):
Attached [to the first Office action] were
copies of four [third-party] trademark
registrations, [three] each for "pens" [and
one for "markers and pens"] and for marks
comprising [in part] the term "WRITER," which
was disclaimed in each registration. In
addition, an inquiry was made as to the
significance of STRIPE WRITER in the relevant
trade or industry or as applied to the
applicant's goods.

The applicant responded informally with
an electronic communication ..., stating that
Ser. No. 78107577
5
"the pen with which the mark is intended for
use will feature a dual color effect." In a
subsequent electronic communication ..., the
applicant stated that "the pen will feature
striped ink."

In addition, citing definitions of the words "stripe"
and "writer" from The American Heritage Dictionary of the English
Language (3rd ed. 1992),2 the Examining Attorney observes that:
As defined, the word "STRIPE" means "a.
A long narrow band distinguished, as by color
or texture, from the surrounding material or
surface; b. A textile pattern of parallel
bands or lines on a contrasting background."
As defined, the word "WRITER" means "One who
writes, especially as an occupation."

While also noting that "a definition of 'pen' is 'writer,'" the
definition which the Examining Attorney has made of record from
the same dictionary lists the word "pen" as a noun meaning:
1. An instrument for writing or drawing
with ink or similar fluid, especially: a. A
ballpoint pen. b. A fountain pen. c. A pen
point. d. A penholder and its pen point. e.
A quill. 2. An instrument for writing
regarded as a means of expression. 3. A
writer or an author: a hired pen.

Based upon the above, the Examining Attorney maintains
that "the term STRIPE WRITER refers to both a writing instrument
that produces striped writings and one who writes in stripes or
using stripes. With either interpretation, the mark merely

2 The Examining Attorney, in her brief, requests that the Board "take
judicial notice of the above definitions, pursuant to TBMP §1208.04."
Inasmuch as it is settled that the Board may properly take judicial
notice of dictionary definitions, the request is approved and
consideration has been given thereto. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Ser. No. 78107577
6
describes the goods." In particular, the Examining Attorney
insists that:
Here, the mark STRIPE WRITER will
immediately inform prospective consumers that
the goods on which this mark is used are
either writing instruments that produce
stripes or are intended for use by writers
who wish to write using stripes. Both
potential meanings are considered merely
descriptive under federal trademark law. The
fact that two different interpretations are
possible--both descriptive--does not obviate
the refusal. .... Clearly, the wording
STRIPE WRITER, when used in connection with
these goods, tells the prospective consumer
that if he purchases this product, he will be
able to write in stripes. No imagination is
required.

The Examining Attorney also relies on applicant's statements,
specifically, that "the pen will feature striped ink" and that
"the pen with which the mark is intended for use will feature a
dual color effect," as "clearly supporting the argument that the
mark is descriptive in relation to the goods for which
registration is sought." Moreover, while conceding that the
record contains no examples of third-party use of the term
"STRIPE WRITER," the Examining Attorney, citing In re Acuson, 225
USPQ 790 (TTAB 1985) and In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983), contends that "[t]he
fact that an applicant may be the first and sole user of a merely
descriptive designation does not justify registration where the
record shows that the term is merely descriptive of the
identified goods."
Ser. No. 78107577
7
Applicant, in its reply brief, reiterates its various
contentions that its mark is suggestive, urging that (italics in
original):
With respect to the meaning of the
composite mark STRIPE WRITER, the Examining
Attorney's argument fails to distinguish
between word usage that is normal or
veritative [sic] and word usage that is
extended or metaphorical (tropical). In this
case, the Examining Attorney argues that the
mark "tells the prospective consumer that if
he purchases this product, he will be able to
write in stripes." .... No dictionary of
the English Language and no native speaker of
the English/American language would ever use
the expression "write in stripes" in common
every day language, and, it is doubtful that
any such person would know what that
expression means ... because people write
words, not (in) stripes. People draw
stripes, they do not "write in stripes,"
unless that expression is used in a very
loose and metaphorical way, i.e., a mode of
thinking that requires imagination, thought,
or intellection, such as is the property of a
suggestive mark. Indeed, the Examining
Attorney's [sic] further argues that the word
"pen" is a definition of the word "writer",
as if any English speaker ... would at once
see the word "writer" [as] meaning author and
think of the word "pen" in the sense of
writing instrument, as opposed to "pen" in
the extended sense of "author" as in "pen
name". ....

Likewise, applicant renews its assertion that "[t]here
is nothing in the goods ... that indicates that the 'pen will
feature striped ink' or that 'the pen with which the mark is
intended for use will feature a dual color effect." We note,
however, that applicant has indeed made the following statements
(emphasis added) in e-mail communications which form part of the
record herein:
Ser. No. 78107577
8
"Although the pen with which the mark is
intended for use will feature a dual color
effect, it can also achieve a single color
effect"; and

"'Stripe' is not normally used in the
context of lines made by pens and is not
generic to lines made by marker pens.

It is our view the 'line' marker is more
generic than 'stripe.' All pens can draw a
line but until now we do not believe writing
instruments have been associated with the
word stripe. Whilst the pen will feature
striped ink, it is not a feature that is
recognized or associated with pens,
markers[,] etc. This marker is new and
innovative and [we] are looking to register a
mark that the consumer will associate with
this pen."

Upon consideration of the evidence and arguments
presented, we agree with applicant that, when considered in its
entirety, the mark "STRIPE WRITER" is suggestive rather than
merely descriptive of applicant's "coloring pens, writing pens,
drawing pens and felt tip markers." Although the term "WRITER,"
as shown by the disclaimer of such term in the third-party
registrations which are of record, has on occasion been regarded
as merely descriptive of pens and markers, it nonetheless is
plain from the definition of such term that in common parlance it
generally refers to a person who writes, especially as an
occupation, rather than to a thing or instrument for writing.
Similarly, while it is obvious, in light of the definition of the
word "STRIPE," that any pen or marker with a broad enough tip, or
one which featured "striped ink" or "a dual color effect," could
be used to write or draw a relatively long, narrow band of a
different or distinguishing color or texture, pens and markers
Ser. No. 78107577
9
are typically used to communicate, by writing or drawing, rather
than to produce stripes per se. Thus, combining the words
"STRIPE" and "WRITER" to form the term "STRIPE WRITER" results in
a suggestive mark since, as persuasively argued by applicant, in
ordinary discourse users of pens and markers, and such writing
instruments themselves, would not be considered "stripe writers"
except, perhaps, through the exercise of a multi-stage reasoning
process or the utilization of imagination, thought or perception.
Finally, to the extent that we may have any doubt as to
whether applicant's mark immediately conveys significant
information about a characteristic, feature or other attribute of
its goods or their nature or use, we resolve such doubt, in
accordance with the Board's settled practice, in favor of the
publication of applicant's mark for opposition. See, e.g., In re
Rank Organization, Ltd., 222 USPQ 324, 326 (TTAB 1984); In re
Conductive Systems, Inc., 220 USPQ 84, 86 (TTAB 1983); In re
Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981); and
In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
reversed.