Kraft Tool Co.

Trademark Trial and Appeal Board

Dec 5, 2005

No. 76578800 (T.T.A.B. Dec. 5, 2005)

Mailed:
Dec. 5, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kraft Tool Co.
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Serial No. 76578800
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John C. McMahon for Kraft Tool Co.

Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
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Before Bucher, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark depicted below for goods identified in the
application as “hand tools; namely, masonry jointers.”

THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76578800
2
In the application, applicant voluntarily disclaimed
the exclusive right to use the words MASONRY and JOINTER
apart from the mark as shown. See Trademark Act Section 6,
15 U.S.C. §1056.
The Trademark Examining Attorney has required
applicant to disclaim the word BARBELL as well, on the
ground that it is merely descriptive of applicant’s goods.
See Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
More specifically, the Trademark Examining Attorney
contends that BARBELL merely describes the shape of
applicant’s goods. Pursuant to Trademark Act Section 6,
the Trademark Examining Attorney has issued a final refusal
of registration pending applicant’s submission of such
disclaimer.
Applicant has appealed the final refusal. The appeal
is fully briefed. We affirm.
The Trademark Examining Attorney may require the
applicant to disclaim an unregistrable component of a mark
otherwise registrable. See Trademark Act Section 6.
Merely descriptive terms are unregistrable, see Trademark
Act Section 2(e)(1), and therefore are subject to
disclaimer if the mark is otherwise registrable. Failure
to comply with a disclaimer requirement is grounds for
refusal of registration. See In re Omaha National Corp.,
Ser. No. 76578800
3
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A.
1975); In re National Presto Industries, Inc., 197 USPQ 188
(TTAB 1977); In re Pendleton Tool Industries, Inc., 157
USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose 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). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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 on or in connection with those goods or
services, and the possible significance that the term would
Ser. No. 76578800
4
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
It is settled that “a term or word which merely
describes the form or shape of a product falls under the
proscription of Section 2(e)(1) of the Trademark Act.” In
re Metcal, 1 USPQ2d 1334, 1335 (TTAB 1986). See In re
H.U.D.D.L.E., supra, (TOOBS, the phonetic equivalent of
“tubes,” merely descriptive of bathroom and kitchen
fixtures in the shape of tubes); In re Ideal Industries,
Inc., 134 USPQ 416 (TTAB 1962)(WING NUT descriptive of
electrical connectors shaped like a wing nut). See also
Scanwell Laboratories, Inc. v. Department of Transp.,
Ser. No. 76578800
5
Federal Aviation Administration, 181 F.2d 1385, 179 USPQ2d
238 (CCPA 1986)(V-RING merely descriptive of directional
antennas, the primary components of which were shaped in
the form of a “v” and a “ring”); In re Walker Manufacturing
Co., 359 F.2d 474, 149 USPQ 528 (CCPA 1966)(CHAMBERED PIPE
merely descriptive of an exhaust system consisting of a
series of small tuning chambers); J. Kohnstam, Ltd. v.
Louis Marx & Co., 280 F.2d 547, 126 USPQ 362 (CCPA
1960)(MATCHBOX SERIES merely descriptive of toys sold in
boxes having the size and appearance of matchboxes); and In
re Zephyr American Corp., 124 USPQ 464 (TTAB 1960(V-FILE
merely descriptive of card filing device in which the
opening between the cards is in the form of a “v”).
Both applicant and the Trademark Examining Attorney
have made of record photographs of applicant’s masonry
jointer which are shown on applicant’s packaging and on
applicant’s advertising materials. The photographs of the
product, and the accompanying text, reveal that the product
is a bar with a round head ball-shaped extension on either
end. One of the balls is one half-inch in diameter, and
the other is five-eighths of an inch in diameter. The
jointer is seven-and-one-half inches long, in all.
In accordance with the caselaw authorities discussed
above, and considering the photographs and descriptions of
Ser. No. 76578800
6
applicant’s product contained in the record, we find that
the term BARBELL is merely descriptive of the shape of
applicant’s goods, and that it therefore is merely
descriptive of the goods and subject to disclaimer.
Contrary to applicant’s argument, it is irrelevant
that applicant’s jointer is not big enough to be an actual
barbell. Clearly, the jointer is shaped like a barbell.
We are not persuaded by applicant’s arguments to the
contrary, i.e., that the product is not shaped like a
barbell because it is asymmetrical, with one end of the
barbell being one-half inch in diameter and the other end
being five-eighths of an inch in diameter. Even assuming
this fact is true as applied to applicant’s goods as
currently marketed, that difference is too slight to
overcome the tool’s overall barbell-shaped appearance.
Moreover, purchasers would be further encouraged to
view the goods as being barbell-shaped by the design
portion of the mark itself, which depicts a man holding a
barbell.
Applicant also argues that even if the goods are
barbell-shaped, the term BARBELL is not merely descriptive
because it creates a double entendre as applied to the
goods, suggesting strength, power and agility as well as
describing the shape of the goods. We are not persuaded by
Ser. No. 76578800
7
this argument, because this alleged second meaning of the
term is so attenuated that, standing alone, it would not be
readily apparent to purchasers of these goods. For a term
to be considered a double entendre as applied to the goods,
both meanings must be readily apparent from the term
itself. See In re Wells Fargo & Company, 231 UPSQ 95 (TTAB
1986). In this case, we find that the sole connotation of
BARBELL as applied to applicant’s goods is that it
describes the shape of the goods.
We also agree with the Trademark Examining Attorney’s
contention that the term BARBELL must remain free for
applicant’s competitors to use in connection with their own
barbell-shaped jointers. This is so even if applicant is
the first or currently the only user of such jointers. See
In re National Shooting Sports Foundation, Inc., 219 USPQ
1018 (TTAB 1983).
In summary, we find that the term BARBELL is merely
descriptive of the shape of applicant’s goods, and that it
therefore is merely descriptive of the goods themselves.
The term therefore must be disclaimed pursuant to Trademark
Act Section 6. We have considered all of applicant’s
arguments to the contrary, including those not specifically
discussed in this opinion, but we are not persuaded by
them.
Ser. No. 76578800
8
Decision: The refusal to register based on
applicant’s failure to disclaim BARBELL is affirmed.
However, if applicant submits the required disclaimer1 of
BARBELL to the Board within thirty days, this decision will
be set aside, the application shall be amended to enter the
disclaimer, and the application then shall proceed to
publication. See Trademark Act Section 2.142(g), 37 C.F.R.
§2.142(g).

1 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use MASONRY BARBELL
JOINTER is claimed apart from the mark as shown.” TMEP
§1213.08(a)(4th ed. April 2005).