McCrane, Inc.

Trademark Trial and Appeal Board

May 16, 2013

No. 85276221 (T.T.A.B. May. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 16, 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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Request for Reconsideration
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Edward S. Wright, Esq., of Law Offices of 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:
The Board, in a decision dated March 5, 2013, affirmed a refusal to register
applicant’s mark SOF on the ground that the mark merely describes the goods
identified in the application, under Trademark Act Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1). In affirming the examining attorney’s refusal, the Board found
applicant’s mark SOF merely descriptive of the goods because “SOF is highly likely
to be perceived as a misspelling or variation of ‘soft.’”
Serial No. 85276221

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On April 5, 2013 applicant filed a request for reconsideration of the Board’s
decision.1 Generally, the premise underlying a request for reconsideration under 37
C.F.R. § 2.144 is that, based on the evidence of record and the prevailing
authorities, the Board erred in reaching the decision it issued. See TBMP §543 (3d
ed. rev. 2012) and the authorities cited therein. The request may not be used to
introduce additional evidence, nor should it be devoted simply to a reargument of
the points presented in the requesting party's brief on the case. See Amoco Oil Co.
v. Amerco, Inc., 201 USPQ 126 (TTAB 1978).
Applicant’s one-page request is laconic in the extreme. Its entire substance is
as follows:
The Board has affirmed the refusal to register largely
upon the basis of a concern that if SOF were registered,
there would be a risk of infringement for others using the
term “soft”. [Quotation of Board’s order omitted.]
To eliminate that concern, applicant is disclaiming the
term “soft”, thereby making it clear that registration of
the mark SOF will not interfere with or impair the right
of other [sic] to use the term “soft”.
Even though “soft” may be somewhat suggestive or even
descriptive of some types of exercise weights, the mark
sought to be registered is SOF, not “soft”. SOF is a
distinctive mark with a distinctive appearance that is

1 Trademark Office records show that on April 5, 2013, applicant also filed in the record of
the application a Voluntary Amendment setting forth a disclaimer of “the exclusive right to
use the word ‘soft’ apart from the mark as shown.” As the examining attorney no longer
has jurisdiction over the application, that filing is inappropriate and should be given no
consideration by the Trademark Examining Operations. In re U.S. Catheter & Instrument
Corp., 158 USPQ 54, 55 n.3 (TTAB 1968). See also TMEP §1501.06 (“An examining
attorney may not take action in an application after the Board has rendered a decision on
appeal, because the examining attorney does not have jurisdiction over the application.”).
Serial No. 85276221

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fully capable of distinguishing applicant’s goods from
those of others.2
Applicant’s request that the Board enter a disclaimer of the word “soft” is
permissible. Under 37 C.F.R. § 2.142(g), the Board can reopen an application after
a decision on appeal in order to enter a disclaimer “where the submission of the
disclaimer puts the application in condition for allowance without the need for any
further examination.” In re S. D. Fabrics, Inc., 223 USPQ 56, 57 (TTAB 1984); see
also In re Petite Suites Inc., 21 USPQ2d1708, 1710 (Comm’r Pats. 1991) (“were the
disclaimer… the only amendment that would need to be entered in petitioner’s
application to place it in condition for allowance by the examiner, the Board could
have remanded the case without need for the instant petition.”). As to the form of
the proffered disclaimer (disclaiming “soft” instead of “sof”), it is established
Trademark Office policy that where a misspelled word must be disclaimed, it is
appropriate to disclaim the word in its correct spelling. TMEP § 1213.08(c). In re
Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987).
The mere offer of a disclaimer in response to a determination that applicant’s
mark is unregistrable under Section 2(e)(1) is not generally appropriate, as such a
disclaimer is not authorized under Section 6 of the Trademark Act, which states
that “The Director may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.” 15 U.S.C. § 1056(a) (emphasis
supplied). Within the terms of the Board’s order, applicant’s mark is not “otherwise
registrable.”

2 Request for reconsideration at 1.
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But reading between the lines of applicant’s request, applicant appears to
argue that the Board erred in finding that applicant’s mark was not distinctive,
because the entry of a disclaimer of “soft” would have been sufficient to allay the
policy concerns underlying the precedents3 pursuant to which misspellings of
merely descriptive terms are deemed to be merely descriptive within the meaning of
Section 2(e)(1). Even though at the time the Board rendered its decision it did not
have before it any offer of a disclaimer by applicant, the Board will address the
contention of applicant that a disclaimer of “soft” would “mak[e] it clear that
registration of the mark SOF will not interfere with or impair the right of other [sic]
to use the term ‘soft’.”4
The policy concerns underlying the principle that a misspelling of a
descriptive word should be deemed merely descriptive, as expressed by various
authorities, may be summarized as “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…”

3 Standard Paint Company v. Trinidad Asphalt Manufacturing Company, 220 U.S. 446
(1911) (RUBEROID merely descriptive); Oakland Chemical Co. v. Bookman, 22 F.2d 930
(2d Cir. 1927); In re ING Direct Bancorp, 100 USPQ2d 1681 (TTAB 2011)
(PERSON2PERSON PAYMENT generic); In re Carlson, 91 USPQ2d 1198 (TTAB 2009)
(URBANHOUZING merely descriptive); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007)
(TOGGS generic); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-
LYX generic); 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);
Armour and Co. v. Organon, Inc., 245 F.2d 495, 114 USPQ 334 (CCPA 1957)
(CORTROPHIN merely descriptive); 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).
4 Request for reconsideration at 1.
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Armour and Co. v. Organon, Inc., 245 F.2d 495, 114 USPQ 334, 337 (CCPA 1957).
This concern has been shared by the United States Supreme Court, the Second
Circuit, the District of Columbia Circuit, and other courts. See footnote 3 above.
A disclaimer of the correct spelling of a misspelled term does not dispose of
this policy concern. A statement on a registration certificate (or in the record
underlying it) to the effect that “no claim is made to the exclusive right to use SOFT
apart from the mark as shown” is not a contractual commitment not to bring suit
against users of SOFT-formative marks; and such a disclaimer would be cold
comfort to a defendant who has been haled into court. A disclaimer is merely a
limitation on the evidentiary significance of a registration certificate. It does not
limit the registrant’s conduct or commit the registrant in any way. Indeed, a
disclaiming registrant’s freedom to act is expressly set forth in Section 6(b) of the
Trademark Act, which states, “No disclaimer, including those made under
subsection (e) of section 1057 of this title, shall prejudice or affect the applicant’s or
registrant’s rights then existing or thereafter arising in the disclaimed matter….”
15 U.S.C. 1056(b).
A disclaimer of “soft” would not restrain applicant from taking legal action
and using the registration that it now seeks against the user of an allegedly
infringing mark that includes the designation SOFT. Moreover, in the context of
such actions it is well established that applicant’s mark would be regarded in its
entirety, including any disclaimed matter, in evaluating similarity to other marks.
Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ
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1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck,
Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965). If the fact that applicant’s mark
suggests the concept of “soft” renders a finding of confusing similarity more likely,
then that fact would be part of the analysis. It is entirely conceivable that applicant
could take umbrage at a mark that contains SOFT as well as other matter that
applicant deems objectionable (for example, trade dress or an associated slogan that
resembles matter used by applicant). In that case, the registration would surely be
mustered to reinforce applicant’s case, both marks at issue would be considered in
their entireties, and applicant would be free to assert that the similarities between
applicant’s registered mark SOF and the accused SOFT-formative mark increase
the likelihood of confusion.
Applicant could also colorably bring infringement claims against marks in
which SOFT is necessarily pronounced in a manner that is phonetically identical to
SOF (for example, where the designation SOFT is immediately followed by a word
beginning with T or D). It is readily observable that there is no phonetic distinction
between the pronunciation of SOFT DUMBELL and SOF DUMBELL, unless one
interjects an unnatural hiatus between the T and D. The same may be said of
expressions such as SOFT TRAC, SOFT TOUCH and SOFT-TOSS.5 It is similarly
difficult, without inserting a hiatus between the words, to create any phonetic
distinction between SOF and SOFT when those terms precede a word that begins

5 See U.S. Reg. Nos. 2725242; 3299710; and 3481955, made of record with applicant’s
response of August 26, 2011.
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with a B or a P, as in the marks SOFT PLAY, SOFT BILT, and SOFT BAITS WITH
BIG ATTITUDE.6
To the extent that applicant’s request for reconsideration may be interpreted
to contend that applicant’s mark contains some different, nondescriptive
significance that is separable from the misspelling of the word “soft,” we note that
Applicant has never suggested what that nondescriptive meaning might be,
whether in its appeal brief or its request for reconsideration. In the context of a
Section 2(e)(1) analysis of a misspelled term, a disclaimer is appropriate only if the
remaining undisclaimed matter “creates a separate commercial impression [having
a] meaning that is not merely descriptive.” In re Carlson, 91 USPQ2d 1198, 1201
(TTAB 2009); cf. In re Grand Metropolitan Foodservice, Inc. 30 USPQ2d 1974
(TTAB 1994). In Carlson, the Board found no such nondescriptive meaning in the
misspelled designation URBANHOUZING. In Grand Metropolitan, the Board
found that a stylized presentation of the mark “MufFuns” could be registered for
muffins with a disclaimer of “muffins,” because the separate meaning of “fun”
emerged as a result of the emphasizing capital F in the middle of the mark, such
that the mark would not be perceived solely as a misspelling of the word “muffins.”
We perceive no additional nondescriptive meaning in applicant’s mark. We must
view applicant’s mark in the context of the goods on which it is to be used. In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002). In that context, it is obvious that applicant’s mark is a

6 U.S. Reg. Nos. 2140024, 2213121; and 3618947, filed with applicant’s response of August
26, 2011.
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misspelling of the word “soft.” As noted above, applicant has not suggested any
alternative, nondescriptive meaning.
The Board, in rendering its decision of March 5, 2013, did not suggest that a
disclaimer of “soft” would lead to a different result, because the entry of a disclaimer
does not render registrable a mark that is otherwise unregistrable. In re Carlson,
91 USPQ2d at 1203 (a finding that URBANHOUZING is merely descriptive renders
moot any question about the propriety of a disclaimer of “urban housing”). For the
reasons discussed above, we adhere to our finding of March 5, 2013 that applicant’s
mark is merely descriptive within the meaning of Section 2(e)(1). As applicant’s
proffered disclaimer would not place the application in condition for allowance, we
deny applicant’s implied request that we reopen the application for entry of the
disclaimer.
Decision: The request for reconsideration is denied. The examining
attorney’s refusal stands affirmed as per the Board’s order of March 5, 2013.