Lamrite West, Inc.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 75432936 (T.T.A.B. Sep. 30, 2003)

Mailed: Sept. 30, 2003
Paper No. 24
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lamrite West, Inc.
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Serial No. 75432936
_______
Richard M. Klein, Sandra M. Koenig and Christopher B. Fagan
of Fay, Sharpe, Fagan, Minnich & McKee, LLP for Lamrite
West, Inc.
Scott M. Oslick, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Lamrite West Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register PERFORATED
PLASTIC on the Supplemental Register as a trademark for
"plastic foundation material in sheet form for use with
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75432936
2
needle work such as cross stitching."1 The word PLASTIC has
been disclaimed. Registration has been refused pursuant to
Section 23 of the Trademark Act, 15 U.S.C. 1091, on the
basis that the proposed mark is generic.2
The appeal has been fully briefed, but applicant did
not request an oral hearing.
As background, we note that applicant initially sought
registration on the Principal Register. The Examining
Attorney to whom the application was originally assigned
refused such registration pursuant to Section 2(e)(1) of
the Act, on the ground that applicant's mark was merely
descriptive of a feature or characteristic of the goods.
In both the initial Office action making such refusal, and
the second action in which the refusal was made final, the
Examining Attorney stated that "applicant may amend the
application to seek registration on the Supplemental
Register."
1 Application Serial No. 75/432,936, filed on the Principal
Register on February 12, 1998, and amended to the Supplemental
Register on May 26, 2000. Applicant has asserted first use and
first use in commerce beginning "in at least May 1993."
2 On the first page of the Examining Attorney's brief he makes
the statement that "registration on the Supplemental Register was
ultimately refused under Section 2(e)(1) of the Trademark Act."
Section 2 of the Act concerns only registration of marks on the
Principal Register, and the reference to this section was
therefore incorrect. However, it is clear from applicant's
papers that it clearly understood that Section 23 was the
statutory provision under which registration was refused.
Ser No. 75432936
3
On May 26, 2000 applicant amended its application to
the Supplemental Register. However, on November 30, 2000,
the present Examining Attorney, to whom the application had
been assigned, refused registration on the Supplemental
Register, and subsequently made this refusal final.
Applicant asserts that such action was contrary to
Office policy, citing TMEP Section 713.01 (3d ed.) which
states that "When assigned to act on an application that
was previously handled by a different examining attorney,
the examining attorney should not take an approach that is
entirely different from that of the previous examining
attorney unless it is clearly appropriate to do so."
We note at the outset that it was acceptable for the
present Examining Attorney to issue the refusal that he
did. It is certainly regretted that applicant may have
believed, based on the first Examining Attorney's actions,
that an amendment to the Supplemental Register would put
the application in condition for registration. However,
the suggestion made by the first Examining Attorney that
applicant amend its application to seek registration on the
Supplemental Register cannot be regarded as a commitment
by that Examining Attorney that a registration on the
Supplemental Register would issue if such an amendment were
made. More importantly, even if the initial Examining
Ser No. 75432936
4
Attorney believed that the mark was registrable on the
Supplemental Register, if information later came to the
attention of that Examining Attorney or a newly-assigned
Examining Attorney that indicated the mark was not
registrable on that Register, the Examining Attorney was
free to refuse registration, regardless of any suggestion
for amendment which might have been made earlier. It is
the mandate of the Office to register only eligible marks,
and therefore it may be proper for an Examining Attorney to
raise a new ground for refusal even late in the examination
process. In fact, even after an appeal has been filed, if
it appears to the Examining Attorney that an issue not
involved in the appeal may render the mark unregistrable,
the Examining Attorney may request the Board to remand the
application for further examination. See Trademark Rule
2.142(f)(6) and TMBP Section 1209.02 (2d ed. June 2003).
In the present situation, where a new Examining Attorney
took over responsibility for the application file, and
refused registration at the first available instance, i.e.,
upon applicant's amending the application to seek
registration on the Supplemental Register, we see no
procedural error in the Examining Attorney's action.
This brings us to the substantive ground for refusal:
whether PERFORATED PLASTIC is capable of functioning as a
Ser No. 75432936
5
trademark, and thus is eligible for registration on the
Supplemental Register for plastic foundation material in
sheet form for use with needle work such as cross
stitching, or whether it is not capable because it is a
generic term for such goods.
We reverse the refusal of registration.
As our primary reviewing court, the Court of Appeals
for the Federal Circuit, has repeatedly stated, the
determination of whether a mark is generic is made
according to a two-part inquiry: "First, what is the genus
of the goods or services at issue? Second, is the term
sought to be registered...understood by the relevant public
primarily to refer to that genus of goods or services?" H.
Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782
F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986), cited in
In re Dial-A-Mattress Operating Corporation, 240 F.3d 1341,
57 USPQ2d 1807 (Fed. Cir. 1999) and In re The Am. Fertility
Soc'y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). The
burden is on the Office to prove that a term is generic.
In re The Am. Fertility Soc'y, supra.
There does not appear to be any dispute that the genus
of goods in this case is plastic needlework foundation
canvas, and that the relevant public for these goods are
Ser No. 75432936
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people that do or are involved with needlework and other
crafts.
Applicant asserts that the common generic name for
such goods is "plastic canvas," and has submitted extensive
evidence in support thereof. In addition to its own
specimen labels and those of other products sold by its own
subsidiary (Darice), in which "plastic canvas" is used as a
generic term, applicant has submitted labels by third
parties in which "plastic canvas" is used in the manner of
a generic term, along with the respective trademarks
QUICKCOUNT, QUICKSHAPE and UNIEK. Similarly, craft kits
use "plastic canvas" as part of the description of the
goods, e.g., "Plastic Canvas Video Box Kit" which bears the
trademark HOBBYKRAFT and lists "plastic canvas" as one of
the contents of the kits, along with "acrylic yarn" and
"imported English needle." Applicant has also submitted
copies of third-party registrations for goods which show
that the Office has accepted "plastic canvas" as an
identification of goods. See, for example, Registration
No. 1,272,871. We will not burden this opinion with an
extensive discussion of applicant's considerable evidence,
but will simply note that it unequivocally shows that
"plastic canvas" is a generic term for its goods.
Ser No. 75432936
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However, a product may be referred to by more than one
generic term, so we turn to a consideration of the
Examining Attorney's evidence. The primary materials
submitted by the Examining Attorney are excerpts of
articles taken from the NEXIS database in which the term
"perforated plastic” is found. For example:
Stored in the crisper drawer of the
refrigerator in a perforated plastic
bag, radishes will keep for a week or
more....
"The Times Union," Albany, New York
Headline: The Methane Down Below;
Problems with the Belmont Learning
Complex are the Latest in a Region
Dotted with Abandoned Oil Wells that
can Leak the Explosive Gas.
Body: His design, which was being
implemented before work on the system
was suspended, included a barrier under
buildings and passive collection
through perforated plastic pipes.
"Los Angeles Times," July 30, 1999
Headline: Loose sand—not ants—causing
porch to sag
Body: Plastic under the stones will
deter the growth of weeds, but it won't
deter the ants. If you use plastic,
use perforated plastic for water to
drain through....
"The Deseret News," July 18, 1999
...Jet-O-Matic shower jump rope.
Craven, a retired TV repairman from St.
Clair Shores, invented the rope a few
years ago. It's a perforated plastic
tube suspended between poles and
Ser No. 75432936
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attached to a garden hose. Water
pressure turns the rope and sprays the
jumper.
"The Detroit News," July 16, 1999
The tournament still featured the
classic wiffle ball, which is a
perforated plastic ball that can spin,
dip and dive....
"Chicago Daily Herald," May 23, 2002.
Again, we will not burden this opinion by reciting all
the excerpts that have been made of record. What is most
remarkable about them is that of the 20 excerpted articles
submitted by the first Examining Attorney, and the 14
submitted by the present one, not one discusses or refers
to the type of goods for which applicant seeks
registration. Further, we cannot determine from these
articles that there is actually a product called
"perforated plastic" from which the goods which are
discussed in the articles are made. Many of the articles
appear to refer to "perforated" as simply an adjective
describing the plastic object, e.g., "perforated plastic
bags" which are used to store vegetables. Thus, the object
itself may be made of plastic, and the plastic has been
perforated, rather than the object being made of a material
known as "perforated plastic." In this connection, we note
one article refers to, not a "perforated plastic pipe," but
a "plastic perforated pipe":
Ser No. 75432936
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Headline: Amoco reveals cleanup plans
for Norledge
Body: As envisioned, the system will
deploy almost 50 horizontal "wells"
which, in fact, will be 3-inch plastic
perforated pipes....
"The Kansas City Star," July 15, 1999
The Examining Attorney has also submitted an excerpt
from the website for Crafter's Market,
www.craftersmarket.net. The page shows a picture of a
product, under which, in bold, all capitalized type, are
the words "PERFORATED PLASTIC." Before this is a text
description:
12 count "perforated" plastic canvas
sheets.
Use for cross stitch or plastic canvas
patterns.
(Spots and filled holes are normal)
8 1/8"x 10 7/8" sheets
Applicant has explained that this reference is to its own
product. Given that the term "perforated" appears in
quotation marks, we cannot say that this shows clear
generic usage of "perforated plastic." We note, however,
that additional pages from that website, submitted by
applicant, separately list, under "Plastic canvas
supplies," "Needles, Cross Stitch/Plastic Canvas";
"Perforated Plastic (Darice)";3 "Plastic Canvas Yarn, 92
3 As noted above, Darice is applicant's subsidiary.
Ser No. 75432936
10
yards"; "Perforated Plastic"; and "Plastic Canvas Yarn, 10
yards."
The Examining Attorney has also made of record
excerpts from the website www.robinsnest.designs.com, which
list various cross stitch kits. The kit descriptions state
that they include "perforated plastic canvas, floss,
needle, chart, and instructions." Applicant has explained
that the "perforated plastic canvas" listed on the
packaging refers to applicant's own plastic canvas, that
the kit maker used applicant's mark incorrectly, and that
"the website apparently picked up the language from the
packaging." Request for remand, p. 6. Applicant has also
explained that the kits bear copyright dates of 1994 and
1995, and that the entries on the website all state that
"This item is out-of-print."
It is clear that applicant's goods are perforated and
are made of plastic. It is also clear that PERFORATED
PLASTIC describes a major characteristic or feature of
applicant’s goods, a fact which applicant has acknowledged
by the amendment of its application to the Supplemental
Register. However, we cannot say that the Office has met
its burden of proving that PERFORATED PLASTIC is a generic
term for "plastic foundation material in sheet form for use
Ser No. 75432936
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with needle work such as cross stitching" or, as the record
shows it is normally called, plastic canvas.
The Examining Attorney asserts that PERFORATED PLASTIC
is generic because "perforated plastic" is the generic name
for a type of plastic and the applicant's goods are made of
perforated plastic. Although the Examining Attorney has
asserted that "perforated plastic" refers to a specific
type of plastic, as discussed previously, the evidence of
record does not bear this out. More particularly, the
Examining Attorney has not established that the specific
plastic from which applicant's goods are made is referred
to generically as "perforated plastic." Thus, the cases
cited by the Examining Attorney are inapposite to the
present situation. In particular, the Examining Attorney
has relied on a number of cases in which services were
found to be generic because the applied-for mark was the
generic term for a central characteristic of the services,
e.g., it named the goods sold through the services.
Of all the evidence which is of record, the only two
pieces which indicate any generic usage are the references
in the Crafter's Market and the robinsnest.com websites.
However, given that the robinsnest.com website refers to a
misusage that ended in 1995, and the Crafter's Market
usages are equivocal, and given the overwhelming evidence
Ser No. 75432936
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that the generic term for the product is plastic canvas, we
cannot find, on this record, that the applied-for mark is
generic. Accordingly, the term is capable of identifying
and distinguishing applicant's goods from those of others,
and is eligible for registration on the Supplemental
Register.
Decision: The refusal of registration is reversed.