McCrane, Inc.

Trademark Trial and Appeal Board

Mar 5, 2013

No. 85276221 (T.T.A.B. Mar. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re McCrane, Inc.
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Serial No. 85276221
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Edward S. Wright for McCrane, Inc.

Ronald McMorrow, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
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Before Wellington, Shaw, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
McCrane, Inc. has applied to register on the Principal Register the mark SOF
in standard character form for goods identified as “Exercise weights,” in
International Class 28. The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground
that applicant’s mark merely describes the goods. When the refusal was made final,
applicant appealed. Applicant and the examining attorney have filed briefs.
The examining attorney contends that SOF is a misspelling of the word
“soft,” which describes a type of exercise weight that is coated or covered with a soft
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material. The examining attorney has made of record evidence in the form of
internet advertisements for exercise weights of this type, indicating that the
purpose of the soft coating is to afford the user a more comfortable grip, or to avoid
scratching or otherwise damaging floors and other surfaces that may come into
contact with the weights. The evidence shows goods called “soft dumbbells” offered
by companies called American Fitness.net; Carnegie Fitness; T&G International
Sourcing Co., Ltd.; Xenios USA; and Only-Cricket.com; “soft weights” offered by
Isokinetics, Inc. and Fitness Wholesale; kettlebells offered by Sports Authority that
have “a soft outer shell that won’t scratch floors”; Nautilus brand “Pilates soft
weight balls” offered by Bowflex; and Bally brand “soft grip weights” offered by
Kmart.1
Applicant argues that SOF is not, in fact, the phonetic equivalent of the word
“soft,” because it lacks the sound of the final letter T. Applicant argues that the
cases relied upon by the examining attorney related to marks that were the exact
phonetic equivalents of descriptive terms. Applicant also points to registrations on
the Principal Register for marks that include the designations SOFT and SOF to
demonstrate that the Trademark Office has treated such marks as non-descriptive
in the past.
“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

1 Evidence submitted with examining attorney’s Office action of November 7, 2011. See also
similar materials submitted with the examining attorney’s final office action of April 26,
2011.
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used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). It is
well established that a slight misspelling of a word will not turn a descriptive word
into a non-descriptive mark if it will be perceived by consumers as the equivalent of
the descriptive term. In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB
2011) (PERSON2PERSON PAYMENT generic); In re Carlson, 91 USPQ2d 1198,
1203 (TTAB 2009) (URBANHOUZING merely descriptive); In re Ginc UK Ltd., 90
USPQ2d 1472, 1475 (TTAB 2007) (TOGGS generic); In re Hubbard Milling Co., 6
USPQ2d 1239 (TTAB 1987) (MINERAL-LYX generic).
Clearly, the spelling of a descriptive term may be so extensively altered that
the resulting mark would not be perceived as the equivalent of the original
descriptive word, but merely suggestive of it. However, even extensively altered
descriptive terms may be found merely descriptive. Andrew J. McPartland, Inc. v.
Montgomery Ward & Co., 76 USPQ 97 (CCPA 1947), cert. denied, 333 U.S. 875, 77
USPQ 676 (1948) (KWIX-TART merely descriptive). The courts have also found
misspelled words to be merely descriptive where the pronunciation of the resulting
designation was not exactly the same as the descriptive term from which it was
derived. American Druggists’ Syndicate v. United States Industrial Alcohol Co., 2
F.2d 942 (D.C. Cir. 1924) (AL-KOL); Elizabeth Arden Sales Corp. v. Faberge, Inc.,
134 USPQ 186 (CCPA 1962) (EXTRORDINAIRE); Car-Freshner Corp. v. Auto Aid
Mfg. Corp., 461 F.Supp. 1055 (N.D.N.Y. 1978) (CAR-FRESHNER); In re Keebler Co.,
479 F.2d 1405, 178 USPQ 155 (CCPA 1973) (RICH ‘N CHIPS).
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The question before the Board is whether SOF is merely descriptive because
of its resemblance to the word “soft.” The policy underlying the rule that misspelled
words may be found merely descriptive is set forth in the Restatement of Unfair
Competition as follows:
The misspelling or corruption of an otherwise descriptive
word will not ordinarily alter the descriptive character of
the designation. In many instances the contrivance will
not overcome the ordinary meaning of the term, and
prospective purchasers will thus continue to understand
the designation in a purely descriptive sense. …
Recognition of exclusive rights in variants and
corruptions of descriptive words also imposes a risk of
liability on subsequent users of the original words.
[Cross-reference omitted.] Thus, unless the alteration is
sufficient to avoid encumbering use of the original word,
the variation remains descriptive.
RESTATEMENT (THIRD) OF UNFAIR COMPETITION (2012), § 14, Comment a.
The predecessor of our primary reviewing court noted that in the “attempt[ ]
to register a ‘mark’ which is a mere misspelling or contraction of a descriptive
term,” there is an inherent “evil,” which is “the possibility of harassment by the
registrant of the descriptive term, by means of threats of infringement suits and the
like, of others in the field who use the descriptive term to describe their products…”
Armour and Co. v. Organon, Inc., 245 F.2d 495, 114 USPQ 334, 337 (CCPA 1957).
Examples of the “harassment” against which Armour warned can be seen in
American Aloe Corporation v. Aloe Creme Laboratories, Inc., 159 USPQ 560 (N.D.
Ill. 1968) and Aloe Creme Laboratories, Inc. v. Milsan, Inc., 165 USPQ 37 (5th Cir.
1970), two cases in which a plaintiff claiming rights in the trademark ALO
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unsuccessfully alleged infringement by users of marks that included the descriptive
word ALOE.
The Supreme Court has expressed the same concern, i.e., that a business
should not be allowed to appropriate a term whose “primary meaning” is one that
“others may employ with equal truth, and with equal right, for the same purpose.”
Standard Paint Company v. Trinidad Asphalt Manufacturing Company, 220 U.S.
446, 454 (1911). In finding the mark RUBEROID to be merely descriptive, the
Court stated:
The word [“rubberoid”], therefore, is descriptive, not
indicative of the origin or the ownership of the goods; and,
being of that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled [as
RUBEROID]. Bad orthography has not yet become so
rare or so easily detected as to make a word the arbitrary
sign of something else than its conventional meaning….
Id. at 455.
Commenting upon Standard Paint, the Restatement explains, “Application of
the rule turns on both the distinctiveness of the altered form and the extent to
which the remaining visual or aural similarities with the word as correctly spelled
create a risk of infringement for others using the original term.” RESTATEMENT,
Reporter’s Note to § 14, Comment a. Similarly, the Second Circuit explained that a
business may not appropriate a mark if the use of other marks that include the
related descriptive term would be deemed to infringe it: “A ‘descriptive’ mark is
bad… because…the protection of the mark would trench upon common speech…. If
a true description in English speech is an infringement, the mark is wholly bad.”
Oakland Chemical Co. v. Bookman, 22 F.2d 930, 931 (2d Cir. 1927).
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We find that registration of applicant’s mark SOF would go against the
policies expressed above. We must consider the degree of descriptiveness of a
designation in relation to the specific goods on which it will be used. Remington
Products, Inc. v. N. Am Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448
(Fed. Cir. 1990). In the context of exercise weights, potential consumers are likely
to perceive SOF as a “misspelling or corruption” of the word “soft,” because “soft
weights” and “soft dumbbells” are known commodities in the marketplace. In
appearance and sound, SOF is not highly distinct from the word “soft.” Visually,
SOF differs from “soft” only by the lack of the final letter T. It may be true that
SOF is not an exact phonetic equivalent of “soft,” but it is a close approximation,
and in actual speech the final T of the word “soft” may sometimes be elided. That
SOF may be perceived as a variant of “soft” is strongly suggested by the trademark
registrations of record relating to marks that include the designation SOF for goods
that are soft or cushioned: SOF TEE (for a soft vinyl golf tee) and SOF-STX (for
padded martial arts training weapons);2 SOF . CARE (for an inflated cushion); SOF
SPORT and SOF SOLE (for impact-absorbing insoles); SOF GEL (for gel-filled shoe
inserts).3 These registrations are not evidence that the marks are in use; but they
do show the proclivity of those who applied for them to associate the designation
SOF with things that are soft or cushioned. Overall, we find that in the context of
applicant’s goods, SOF is highly likely to be perceived as a misspelling or variation
of “soft.”

2 Submitted with applicant’s response of October 26, 2011.
3 Submitted with examining attorney’s Office action of November 7, 2011.
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Considering the visual and phonetic similarities between applicant’s mark
and the descriptive word “soft,” we find that if the mark were registered there
would be “a risk of infringement for others using the original term.” That is,
applicant could colorably allege that trademarks consisting of or including the
designation SOFT infringe upon applicant’s trademark rights.4 In other words, the
difference between SOF and “soft” is not “sufficient to avoid encumbering use of the
original word.” Restatement, § 14, Comment a. This is the undesired outcome
against which the cases discussed above warn, and against which Section 2(e)(1) of
the Trademark Act protects. Accordingly, we find that applicant’s mark is merely
descriptive within the meaning of Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Decision: The refusal to register is affirmed.

4 We do not suggest that applicant has engaged in such conduct, or plans to. Our purpose is
merely to point out the untoward effects that could ensue if the requested registration were
to issue.