Kabushiki Kaisha Pilot Corporation t/a Pilot CorporationDownload PDFTrademark Trial and Appeal BoardSep 25, 201979214692 (T.T.A.B. Sep. 25, 2019) Copy Citation Mailed: September 25, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation _____ Serial No. 79214692 _____ David Ehrlich of Fross Zelnick Lehrman & Zissu PC, for Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation. Deborah Meiners, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Cataldo, Wolfson, and Pologeorgis, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation (“Applicant”) seeks registration on the Principal Register of the mark for “stationery” in International Class 16.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that 1 Application Serial No. 79214692 was filed on April 11, 2017, under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), requesting an extension of protection based on Applicant's International Registration No. 1361161 registered on April 11, 2017. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 79214692 -2- Applicant’s mark, in its entirety, is merely descriptive of the goods identified in its application. When the refusal was made final, Applicant appealed. Both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register.2 I. Initial Matter – Identification of Goods As noted above, Applicant seeks to register its mark for “stationery.” However, as discussed more fully below, the evidence of record demonstrates that Applicant’s goods are actually writing instruments. The dictionary definition of the term “stationery” is “materials (such as paper, pens and ink) for writing or typing,”3 which encompasses Applicant’s actual goods. The Examining Attorney maintains that Applicant’s identification of goods did not need to be narrowed because the term “stationery” by definition includes writing instruments.4 2 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference the docket and electronic file database for the involved application. All citations to the TSDR database are to the downloadable .PDF version of the documents. 3 The Examining Attorney included the dictionary definition of the term “stationery” with her appeal brief purportedly accessed on July 9, 2019 from the website www.meriamwebster.com. By doing so, it appears that the Examining Attorney is requesting the Board take judicial notice of this definition. The dictionary definition from the actual website, however, was not attached to the Examining Attorney’s brief, but “the Board may, sua sponte, take judicial notice of dictionary definitions, In re Jimmy Moore LLC, 119 USPQ2d 1764, 1768 (TTAB 2016), and we take judicial notice of this definition and will consider it for any probative value that it may have. We do note, however, that the better practice would have been to submit the dictionary definition downloaded from the website during the prosecution of Applicant’s application. However, since Applicant has not objected to the inclusion of this dictionary definition in the Examining Attorney’s brief, we find no prejudice to Applicant in considering it, particularly since Applicant relies on this definition as an apt description of its goods in traversing the refusal. See Applicant’s Appeal Brief p. 5; 4 TTABVUE 8 (“The Applicant intended ‘stationery’ (the goods identified in the application) to include writing instruments such as pens or pencils.”) 4 See Examining Attorney’s Appeal Brief, p.7; 6 TTABVUE 7. Serial No. 79214692 -3- In view thereof and solely for purposes of this decision, our analysis regarding the Section 2(e)(1) refusal will focus on Applicant’s apparent actual goods, namely, writing instruments. II. Mere Descriptiveness – Applicable Law Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the registration of a mark which, when used on or in connection with the applicant's goods, is merely descriptive of them. “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Descriptiveness is analyzed in relation to an applicant’s identified goods, “the context in which the [term] is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use”; that a term may have other meanings in different contexts is not controlling. In re Bayer AG, 82 USPQ2d at 1831. Descriptiveness is not considered in the abstract. Id. In other words, we evaluate whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). Serial No. 79214692 -4- When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372, 1374 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet). On the other hand, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite has an incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363, 365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing head at one end, the head being of solid uninterrupted construction without prongs”). In this regard, “incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978) (the association of applicant's mark TENNIS IN THE ROUND with the phrase “theater-in-the-round” creates an incongruity because applicant’s services do not involve a tennis court in the middle of an auditorium). Thus, we must Serial No. 79214692 -5- consider the issue of descriptiveness by looking at Applicant’s mark in its entirety. III. Arguments and Evidence In support of her Section 2(e)(1) refusal, the Examining Attorney submitted the dictionary definitions of the terms “super” and “grip” which are defined as follows:5 SUPER: 1: a: of high grade or quality b: used as a generalized term of approval – a super cook 2: very large or powerful – a super atomic bomb GRIP: 1: a: a strong or tenacious grasp b: strength in gripping c: manner or style of gripping 2: a firm tenacious hold typically giving control, mastery or understanding 3: a part or device for gripping; 4: a part by which something is grasped. Additionally, the Examining Attorney submitted screenshots from Applicant’s website, as reproduced below:6 5 March 21, 2018 Office Action, TSDR pp. 6-7 (from www.merriam-webster.com). 6 September 19, 2018 Final Office Action, TSDR pp. 29-31. The blue lines that circle the text in the first and third screenshot were provided by the Board. Serial No. 79214692 -6- Serial No. 79214692 -7- The Examining Attorney argues that Applicant’s own website touts the grip as a feature or characteristic of its identified goods by stating as follows: “It’s grip has been designed for a more comfortable hold,” and “An ergonomic pen with a rubber grip to ensure better control and a better writing comfort!” (emphasis added). To illustrate further the descriptive nature of the term “grip” in relation to Applicant’s identified goods, the Examining Attorney also submitted Internet evidence from various third-party retail websites that advertise writing instruments and that show that “a grip” is discussed as a feature of writing instruments.7 The third-party website evidence is summarized below: • “Mechanical Pencils- Black Barrel with Rubber Grip- Refillable,” “Cushioned, rubber grip provides extreme writing comfort and control” 7 Id., TSDR pp. 7-28. Serial No. 79214692 -8- and “Assorted color plastic pocket clips with matching rubber grips.” (www.anypromo.com); • “Soft grip enhances comfort” and “BIC Xtra-Comfort Mechanical Pencils feature comfortable soft grips that help make every day writing tasks more pleasant.” (www.target.com); • “Comfortable non-slip rubberized grip.” (Duluth Trading Co. web site); • “Camo Pop a Point Pencil W/ Grip” and “Grips have been added to the barrel for writing comfort.” (www.usschoolsupply.com); and • “Slim, lightweight automatic pencil with ridged finger grips” and “Sharplet-2 Mechanical Pencil features a slim, lightweight barrel with ridged finger grips for more comfort and control.” (www.amazon.com). The Examining Attorney argues that this third-party retailer evidence shows that “the word ‘grip’ at best merely describes a feature or characteristic of writing instruments because it appears in the section of the web sites that supplies customers with information about the product. Furthermore, the quality and features or characteristics of the ‘grip’ or ‘grips’ are touted (e.g. ‘comfortable,’ ‘soft,’ ‘ridged,’ etc.)”.8 Additionally, the Examining Attorney contends that this evidence indicates that a grip is a primary component of writing instruments because the quality and features or characteristics are promoted as features or benefits to consumers.9 Finally, the Examining Attorney maintains that the addition of the laudatory word SUPER to the merely descriptive term GRIP results in a composite mark that is itself merely descriptive of Applicant’s identified goods.10 8 Examining Attorney’s Appeal Brief, p. 3, 6 TTABVUE 3. 9 Id. 10 Id. Serial No. 79214692 -9- In traversing the refusal, Applicant argues that (1) its applied-for mark is suggestive, not descriptive, of the identified goods; (2) the combination of the terms SUPER and GRIP creates a unitary mark; (3) the mark does not describe a “principal component” of the identified goods because consumers are most likely to understand the term GRIP to mean “a strong and tenacious grip” rather than use a less common definition of the term GRIP to derive a meaning from Applicant’s mark; (4) the term GRIP could carry different meanings and consumers could interpret its meaning differently in relation to Applicant’s goods; (5) even if consumers do cycle through the various definitions of the term GRIP, that process in and of itself would reflect the very type of advanced thought and perception that separates a descriptive mark from a suggestive one; (6) consumers may not necessarily know what a grip is in relation to writing instruments; and (7) the USPTO has previously allowed other GRIP- formative marks for goods similar or identical to Applicant’s to register without a disclaimer of the term “grip.”11 Additionally, Applicant requests that the Board resolve any doubt as to whether Applicant’s mark is descriptive in Applicant’s favor and allow the application to proceed to publication.12 In support of its arguments, Applicant submitted copies of twelve third-party registrations of GRIP-formative marks on the Principal Register for goods identical or similar to Applicant’s identified goods, in which the term GRIP is not deemed 11 Applicant’s Appeal Brief, pp. 4-11, 4 TTABVUE 5-12. 12 Id. at p. 12, 4 TTABVUE 15. Serial No. 79214692 -10- merely descriptive, and is not disclaimed.13 The third-party registrations are identified in the chart below. Registration No. Mark Relevant Goods 2116495 COMFORT GRIP Writing instruments, namely, pens and pencils 2658049 COMFORT GRIP Artist brushes; cosmetic brushes 3035333 ART GRIP (ART disclaimed) Colored pencils 3058853 ART GRIP AQUARELLE (ART or AQUARELLE disclaimed) Writing implements, Pens, pencils, colored pencils, black lead pencils, artist pencils, ball-point pens, fiber tip coloring pens, technical drawing pens, fountain pens 2470196 BIC MATIC GRIP Writing instruments, namely, mechanical pencils 2780401 CLASSIC GRIP Pens and highlighters 2139265 GREAT GRIP14 Artists’ brushes 2182621 GREAT GRIPS pencils 1914921 DR. GRIP Writing instruments, namely, pens and mechanical pencils 2581140 Ball point pens, mechanical pencils, writing instruments 4500499 DR. GRIP PUREWHITE Writing instruments, namely, pens and pencils. 13 August 28, 2018 Response to Office Action, TSDR pp. 10-22. 14 We note that Registration Nos. 2139265 and 2182621 for the marks GREAT GRIP and GREAT GRIPS, respectively, are owned by the same registrant. Serial No. 79214692 -11- Registration No. Mark Relevant Goods 4500499 DR. GRIP FULLBACK Writing instruments, namely, pens and pencils In further support of its arguments, Applicant also cites to numerous cases where the Board has found the subject marks suggestive and not descriptive.15 IV. Analysis We initially find that the term “SUPER” is a laudatory term, as acknowledged by Applicant,16 and that said term has been held to be descriptive. See In re Positec Grp. Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013) (SUPERJAWS is merely descriptive of “machine and hand tools, including ‘jaws' for precision clamping’ and ‘metal vice jaws.”’); see also 1 J. MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:17 (5th ed. 2019) (laudatory terms are “regarded as being descriptive.”). The task before us then is to determine whether the combination of the term 15 Applicant also cites to several non-precedential Board decisions in support of its arguments. Although parties are permitted to cite to any Board decision, citations to non- precedential decisions is not encouraged and are nonetheless not binding on the Board. See In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018) (“Board decisions which are not designated as precedent are not binding on the Board, but may be cited and considered for whatever persuasive value they may hold.”); In re Morrison & Foester LLP, 110 USPQ2d 1423, 1427, n.6 (TTAB 2014) (“Although parties may cite to non- precedential decisions, the Board does not encourage the practice.”); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not binding on the Board and because they have no precedential effect, the Board generally will not discuss them in other decisions); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1203.02(f) (2019). Accordingly, we have given these non-precedential Board decision little, if any, consideration in our analysis. 16 Applicant’s Appeal Brief, p. 6, 4 TTABVUE 9. Serial No. 79214692 -12- SUPER with the word GRIP renders the composite mark merely descriptive of Applicant’s identified goods. The Board’s decision in In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) is instructive. In Phillips-Van Heusen, the Board reviewed seven of its prior decisions involving SUPER-formative marks, i.e., SUPER BLEND, SUPER BUY, SUPER GEL, SUPERHOSE!, RALSTON SUPER SLUSH, SUPER COLLINEAR, and SUPER IRON. Id. at 1051-52. Following a review of these cases, the Board then distilled an analogous “general proposition” concerning the mark SUPER SILK for shirts made of silk-like fabric (the subject mark) by stating that: if the word ‘super’ is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services. Id. at 1052. (emphasis added). Applying the guidance set forth in the Phillips-Van Heusen decision, we must now determine whether the term GRIP constitutes a word which names Applicant’s goods, or a principal component, grade or size thereof, so that its combination with the laudatory term SUPER would render Applicant’s composite mark merely descriptive. Based on the evidence of record, including the excerpts from Applicant’s own website, we find that the term GRIP does identify a principal component of Applicant’s writing instruments. As noted by the Examining Attorney and as demonstrated by the record, Applicant’s own website touts “the grip” of its writing instruments by informing potential consumers that its writing instrument’s “grip Serial No. 79214692 -13- has been designed for a more comfortable hold,” and that Applicant’s writing instrument is “[a]n ergonomic pen with a rubber grip to ensure better control and a better writing comfort!” (emphasis added). Thus, it can be reasonably assumed that the average consumer of Applicant’s writing instruments will understand the significance of the word “GRIP” to refer to a principal component of Applicant’s goods. As to Applicant’s arguments in traversing the refusal, we find them unpersuasive. With regard to Applicant’s argument that the term GRIP may have multiple meanings, that fact alone is not controlling to the issue of whether Applicant’s composite mark is merely descriptive of Applicant’s identified goods. In re Franklin Cnty. Historical Soc’y 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1209.03(e) (October 2018). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). Applicant’s argument that consumers may not know what a grip is in relation to writing instruments is also unavailing. “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). As already noted, determining the descriptiveness of a term is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Serial No. 79214692 -14- Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer AG, 82 USPQ2d at 1831); TMEP §1209.01(b). Further, “[a] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 71 USPQ2d at 1371 (citing In re Dial-A- Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is sufficient if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 102 USPQ2d at 1219; see also In re Oppedahl, 71 USPQ2d at 1371. Here, the evidence of record demonstrates that the grip component of both Applicant’s writing instruments, as well as writing instruments provided by third parties, is often touted as a significant feature or characteristic of such goods. Accordingly, a potential consumer of writing instruments will understand the significance of the word “GRIP” in Applicant’s proposed mark. We next turn to Applicant’s argument that because the USPTO has previously allowed other GRIP-formative marks to register for writing instruments without a disclaimer of the word “grip,” the term “grip” cannot be viewed as descriptive of Applicant’s goods. Applicant’s third-party registration evidence is unpersuasive. Unlike Applicant’s mark, several of these marks, particularly the DR. GRIP- formative marks, arguably are unitary in nature. Although some of the third-party registrations submitted by Applicant appear to show that the USPTO has allowed the registration of certain marks that include the term GRIP to be registered for writing instruments or paint brushes without a disclaimer of said term, our desire Serial No. 79214692 -15- for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules, as well as the evidence of record. See In re Shabby Chic Brands, LLC, 122 USPQ2d 1139, 1145 (TTAB 2017) (citing In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)). The Board must assess each mark on its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). As the Board has previously stated: It is axiomatic that we must decide each case on its own merits. The bare fact that the USPTO allowed the marks in the referenced third-party registrations to register is of little persuasive value and does not dictate the result in this case nor does it rebut our finding that LITTLE MERMAID is descriptive in the context of this mark. When a mark is refused registration, and the applicant appeals, we must decide the case based on the record in that case in accordance with the governing statutory standard. We are not estopped or disqualified from applying the statute because, in a prior application which we did not review (and could not have), an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register. In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1800 (TTAB 2017). Moreover, the small number of probative third-party registrations submitted by Applicant is by no means overwhelming so as to demonstrate that the term “grip” is suggestive of writing instruments or that the mere descriptiveness refusal is contrary to any established USPTO practice. Further, Applicant’s reliance on various cases it cites in its brief where the Board found particular marks suggestive, rather than descriptive, is misplaced. None of those decisions concerned marks that included either the term SUPER or GRIP. As such, these decisions are inapposite to the issues before us. Serial No. 79214692 -16- V. Conclusion We have carefully considered all arguments and evidence of record. Based on the record, we conclude that Applicant’s mark, in its entirety, is merely descriptive of Applicant’s identified goods since the mark merely describes a principal component of the goods in a laudatory fashion. We further find that the combination of the terms “SUPER” and “GRIP” does not create a non-descriptive or incongruous meaning. Instead, we find that each component retains its merely descriptive or laudatory significance in relation to Applicant’s identified goods, the combination of which results in a composite mark that is itself merely descriptive.17 Decision: The refusal to register Applicant’s mark on the Principal Register under Section 2(e)(1) of the Trademark Act on the ground that the mark, in its entirety, is merely descriptive of Applicant’s identified goods is affirmed. 17 Although not argued by either Applicant or the Examining Attorney, we also find that the stylization or font of the lettering in Applicant’s mark is not so distinctive that it would obviate our finding of mere descriptiveness. Cf. In re Cordua Rests., Inc., 118 USPQ2d at 1639-40 (stylized font display of the generic name CHURRASCOS for restaurants that specialize in churrascos-style steak was not so unusual that it created a separate impression); In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012) (display of generic term was not distinctive enough to create a commercial impression apart from the word itself). Copy with citationCopy as parenthetical citation