Magnet-Notes, Ltd.

Trademark Trial and Appeal Board

Sep 14, 2007

No. 78611219 (T.T.A.B. Sep. 14, 2007)

Mailed: September 14, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MagnetNotes, Ltd.
________

Serial No. 78611219
_______

Lisa Ryan-Lindquist of Vidas, Arrett & Steinkraus, P.A. for
MagnetNotes, Ltd.

S. David Sterkin, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Hairston, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

MagnetNotes, Ltd. has filed an application to register
the mark MAGNETNOTES, in standard character form, for goods
identified as “magnetic paper.”1
The trademark examining attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark

1 Application Serial No. 78611219, filed on April 18, 2005, based on an
asserted bona fide intention to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 78611219
2
Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s
mark, when applied to applicant’s goods, is merely
descriptive of them. Applicant appealed. Applicant and
the examining attorney have filed briefs. We reverse the
refusal to register.
The examining attorney’s position is that applicant’s
mark combines two terms, MAGNET and NOTES, both of which
“merely describe the nature of Applicant’s goods, ‘magnetic
paper.’” (Examining attorney’s Brief at unnumbered p. 2).
In reaching that conclusion, the examining attorney first
reasons that MAGNET “is defined as meaning, in part, ‘An
object that is surrounded by a magnetic field and that has
the property, either natural or induced, of attracting iron
or steel.’” (Id. (quoting the first of ten definitions of
“magnet” from the online source Dictionary.com)). The
examining attorney then looks to applicant’s own website to
find that applicant’s goods consist of plain paper with a
magnetic coating.2 From that description, the examining
attorney concludes that “the term MAGNET merely

2 We do not have before us any actual specimens. The examining attorney
based his analysis on a detailed description of the goods found on
applicant’s own website. Applicant has not challenged the examining
attorney’s reliance on that description. Thus, we conclude that the
examining attorney’s description is accurate.

Ser No. 78611219
3
describes a characteristic of Applicant’s goods.”
(Examining attorney’s Brief at unnumbered p. 3).
The examining attorney then focuses on the term NOTES,
first observing that “[t]he term NOTES is defined, in part,
as ‘A brief record especially one written down to aid the
memory: took notes in class.’” (Id. (quoting the first of
eight definitions of “note” from the online source
Dictionary.com)). The examining attorney further explains
that the term NOTES is frequently used to describe paper
products. The examining attorney submitted the results of
an online search showing an extremely high number of
instances where the term PAPER is used together with the
term NOTES. The examining attorney specifically cites a
number of uses of the phrase “note paper” and concludes
that the “evidence clearly shows that the term NOTES is
commonly treated in a descriptive manner in connection with
paper goods such as Applicant’s.” (Examining attorney’s
Brief at unnumbered p. 5). Further, the examining attorney
submitted a number of third-party registrations for marks
that include the term NOTES for paper and paper products,
which bear a disclaimer of the term.
Finally, having addressed the terms individually, the
examining attorney considers the combination of the two
terms, MAGNETNOTES. The examining attorney concludes that
Ser No. 78611219
4
combining the two terms does not create a commercial
impression separate and distinct from the independent
meaning of each of the two terms, and that, as such, the
mark as a whole is descriptive of applicant’s identified
goods. (Examining attorney’s Brief at unnumbered p. 6).
Applicant’s position is that “the mark MAGNETNOTES
does not immediately convey the goods claimed in the
application. Rather, imagination, thought, or perception
is required to determine the nature of the goods from the
mark.” (Applicant’s Reply Brief at p. 2 (internal quotes
omitted)). Applicant points to various definitions of the
term NOTE that are directed to records but are not limited
to paper products. (Applicant’s Opening Brief at pp. 4-5
(quoting eleven definitions of “note” from The American
Heritage College Dictionary, 3rd Ed. (2000)). Applicant
further observes that other commercial products associate
notes or records with magnetic properties but do not
involve paper. (Applicant’s Reply Brief at p. 2 (describing
a magnetic drawing toy sold under the mark MAGNA DOODLE),
Applicant’s Opening Brief at p. 5 (describing various forms
of magnetic media used to store records)). Applicant thus
argues that because MAGNETNOTES could be associated with
other products, and because association of that term with
Ser No. 78611219
5
magnetic paper requires pause and reflection, the term is
at most suggestive.
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 goods in connection with which
it is used, or intended to be used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Abcor
Dev. 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 in order to
be considered merely descriptive; it is enough that the
term describes one significant attribute or function of the
goods. Furthermore, descriptiveness is not determined in
the abstract, but in relation to the goods identified in
the application, the context in which the mark is used, and
the impact that it is likely to make on the average
purchaser of such goods. In re Polo International Inc., 51
USPQ2d 1061, 1062 (TTAB 1999); and In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). In other words, the
issue is whether someone who knows what the goods are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002);
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
Ser No. 78611219
6
1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
If, however, reasoning or imagination is required to
determine the attributes or characteristics of the products
associated with a mark, that mark is suggestive rather than
descriptive. See In re Atavio, 25 USPQ2d 1361, 1362 (TTAB
1992). Even where individual terms are descriptive,
combining them together may evoke a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the goods,
without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. See, e.g., In re Tower Tech., Inc., 64
USPQ2d 1314, 1317-18 (TTAB 2002). There is a narrow line
between terms that are merely descriptive and those that
are only suggestive. Id. (citing In re TMS Corp. of
America, 200 USPQ 57 (TTAB 1978). Any doubt as to whether
a mark is descriptive or suggestive is resolved in favor of
publication of the mark for opposition. In re Conductive
Systems, Inc., 220 USPQ 84, 86 (TTAB 1983); In re Morton-
Norwich Prods., Inc., 209 USPQ 791 (TTAB 1981).
Despite the examining attorney’s arguments and
support, we are not convinced that MAGNETNOTES, when
Ser No. 78611219
7
applied to magnetic paper, is merely descriptive thereof.
Much of the evidence relied on by the examining attorney
does not use the term NOTES alone, but instead links that
term together with the term PAPER. For example, the
examining attorney refers to a “GOOGLE® screenshot . . .
[indicating] the extremely high number of cases in which
the term PAPER is used in conjunction with the term NOTES.”
(Examining attorney’s Brief at unnumbered p. 5 (providing
specific examples of the phrase “note paper” on various
websites)). Frequent use of the phrase “note paper” does
not establish that the term NOTES is the equivalent of the
term “paper.” To the contrary, if NOTES were descriptive
of paper in the way the examining attorney maintains, the
phrase “note paper” would be redundant. Thus, while “note
paper” might immediately convey a description of paper that
can be used for note-taking purposes, the examining
attorney has not established that the term NOTES by itself
is the equivalent of the term “paper.” Paper, even note
paper, does not become a note until the paper has been
used.
Turning from the individual term NOTES to the mark
itself, we conclude that MAGNETNOTES does not immediately
inform prospective purchasers of a feature, characteristic,
or quality of the goods, which in this case is magnetic
Ser No. 78611219
8
paper. Rather, the term provides a starting point for a
multi-step thought process that might lead to magnetic
paper. Upon first impression, MAGNETNOTES creates an
incongruity, as it combines two nouns, MAGNET and NOTES,
normally associated with disparate objects, magnets and
short records. The goods in question are neither the
conventional magnets with which a consumer is familiar, nor
actual records, i.e., notes. The consumer must next
contemplate the adjectives associated with the underlying
terms, i.e., MAGNETIC, and in the case of the phrase “note
paper,” NOTE. Only after mentally converting MAGNETNOTES
to magnetic note paper, can the consumer derive a
description of the goods in question from the mark. Thus,
even if the term NOTES alone was the equivalent of the term
“paper,” the necessity of the multi-step thought process
when considering the combined term MAGNETNOTES requires
reversal of the examining attorneys refusal to register
under Section 2(e)(1). See In re Copytele Inc., 31 USPQ2d
1540, 1542 (TTAB 1994) (“[A] nondescriptive trademark may
be fashioned from the incongruous combination of several
words that are, individually, merely descriptive of an
applicant’s goods . . . .”).
In sum, on this record, we cannot conclude that
MAGNETNOTES is merely descriptive of the goods in this
Ser No. 78611219
9
case, magnetic paper. We are not convinced that the term
NOTES is the equivalent of the term “paper.” Further, the
combined term MAGNETNOTES creates an incongruity that
requires some thought to make the jump to the goods in this
case. Finally, as we have indicated, if there is doubt
about the descriptive character of a mark, that doubt must
be resolved in applicant’s favor.
Decision: The refusal to register under Section
2(e)(1) is reversed.