Konica Photo Imaging, Inc.

Trademark Trial and Appeal Board

Jul 19, 2002

No. 75898605 (T.T.A.B. Jul. 19, 2002)

Mailed: July 19, 2002
Paper No. 14
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Konica Photo Imaging, Inc.
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Serial No. 75/898,605
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Joel E. Lutzker of Schulte, Roth & Zabel for Konica Photo
Imaging, Inc.
Edd Vasquez, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
____________
Before Quinn, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Konica Photo Imaging, Inc. has filed an application to
register on the Principal Register the mark PHOTO STATIONERY
for “unexposed photographic paper which becomes writable
after exposure and development.”1

1 Serial No. 75/898,605, in International Class 1, filed January 20,
2000, based on an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/898,605
2
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive when used in connection with its
identified goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney submitted definitions from The
American Heritage Dictionary of The English Language (3rd
ed. 1992) of “photo” as “a photograph”; and of “stationery”
as “1. writing paper and envelopes, 2. writing materials and
office supplies.” The Examining Attorney also submitted
four excerpts of articles retrieved from the LEXIS/NEXIS
database showing use of the term “photo stationery,” of
which two follow:
Is there a future for a technology [digital
photography] that lets you see shots instantly on
a TV or a PC, print only the best, and even design
your own photo stationery? [San Antonio Express-
News, October 4, 1996.]
After coming up with endless ways of collecting,
keeping and displaying photographs, Mr. Bourne
launched his mail-order business. Exposures
offers photo restoration, the standard fare of
picture frames, photo albums and scrapbooks, as
well as photo stationery, jigsaw puzzles “and for
lazy people like me, shoe boxes,” he said. [The
New York Times, February 7, 1988.]
The Examining Attorney contends that, based on the
dictionary definitions alone, PHOTO STATIONERY merely
Serial No. 75/898,605
3
describes a significant feature of applicant’s goods, namely
that applicant’s goods are “photo stationery, or ‘writable’
stationery on ‘photographic paper’ containing photos.” He
contends that the LEXIS/NEXIS evidence indicates that the
term “photo stationery” is used to describe writing paper
that contains photographs; and that applicant does not deny
that its writable paper, after exposure and development,
contains photos.
Applicant contends that PHOTO STATIONERY is no more
than suggestive “because of the circuitous reasoning
required by prospective consumers to realize that
applicant’s goods are unexposed photographic paper which
becomes writable after exposure and development”; that
further inquiry by consumers encountering the mark would be
necessary to understand the nature of the goods; that
“simply because applicant offers unexposed photographic
paper which becomes writable after exposure and development,
it does not follow that applicant offers or intends to offer
stationery” (emphasis in original); that “applicant is not
selling pre-printed stationery bearing photographs”; that
the mark must be considered in its entirety and applicant’s
mark is a combination of “two seemingly incompatible terms”;
and that the term “photo stationery” is “nebulous.”
Applicant asks that any doubt be resolved in its favor.
Serial No. 75/898,605
4
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
Considering PHOTO STATIONERY in connection with the
identified goods, rather than in the abstract, we conclude
that it is merely descriptive in connection therewith.
There is no question that “photo” is synonymous with
“photograph” or “photographic.” It is equally clear that
Serial No. 75/898,605
5
the term “stationery” encompasses any writable paper.2
Applicant’s identification of goods is sufficiently broad to
encompass paper that can be used, upon exposure and
development, as “writing paper” to write a letter, a report,
or for any other usual use of blank or decorated paper, and
as paper containing photographs that may be described or
otherwise labeled by someone writing thereon. The term
PHOTO STATIONERY, considered in connection with the
identified goods, clearly describes such paper. This
conclusion is not changed by the fact that the paper
intended to be sold by applicant is “unexposed” photographic
paper. It is clearly intended to be used by the purchaser
as paper on which to print photographs and write.
We do not find applicant’s arguments against a finding
of descriptiveness to be persuasive, nor do we have doubt to
resolve in applicant’s favor.
In conclusion, we find that, when applied to
applicant’s services, the term PHOTO STATIONERY immediately
describes, without conjecture or speculation, a significant
feature or function of applicant’s goods, namely, that
applicant’s goods consist of writable photographic paper,
regardless of whether it is exposed or unexposed. Nothing
requires the exercise of imagination, cogitation, mental

2 We rely primarily on the dictionary definitions for these conclusions.
While there are few LEXIS/NEXIS excerpts in the record, we find them to
be supportive of the dictionary definitions.
Serial No. 75/898,605
6
processing or gathering of further information in order for
purchasers of and prospective customers for applicant’s
services to readily perceive the merely descriptive
significance of the term PHOTO STATIONERY as it pertains to
applicant’s goods.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.