Meridian, Inc.

Trademark Trial and Appeal Board

Sep 25, 1998

No. 74623599 (T.T.A.B. Sep. 25, 1998)

Paper No. 14
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Meridian, Inc.
___________
Serial No. 74/623,599
___________
Timothy E. Eagle of Varnum, Riddering, Schmidt & Howlett
for applicant.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney).
____________
Before Walters, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Meridian, Inc. has filed a trademark application to
register the mark STACKABLE STORAGE SYSTEM for “office
furniture.”1 The application includes a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. 1052(f), and a disclaimer of STORAGE SYSTEM apart
from the mark as a whole.

1 Serial No. 74/623,599, in International Class 20, filed January 20,
1995, based on an allegation of use of the mark in commerce, alleging
first use and first use in commerce as of December 29, 1986.
Serial No. 74/623,599
2
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1),2 on the ground that applicant’s mark is
generic in connection with the identified goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
We begin by noting the Examining Attorney’s statement,
in the alternative, that, if the mark is ultimately
determined not to be generic, then applicant has
established that its mark has acquired distinctiveness
under Section 2(f) of the Act. Therefore, the alternative
issue of acquired distinctiveness is not before us.
Regarding the question of whether STACKABLE STORAGE
SYSTEM is generic in connection with the identified goods,
the Examining Attorney contends that applicant’s disclaimer
of STORAGE SYSTEM in this application, which includes a

2 It is well-established that registration may be refused to generic
marks on two statutory grounds, either of which is acceptable. The
first approach is to find the term to be the name of the product or
service and, thus, within the statutory prohibition of Section 2(e)(1),
as the name of the thing is “the ultimate in descriptiveness.” The
second approach views the question as one of trademark or service mark
capacity. Registration is refused, pursuant to Sections 1, 2, [3 for
service marks] and 45, because the subject matter fails to meet the
definition of a trademark or service mark and, thus, is not capable of
distinguishing applicant’s goods or services. See, In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985)
and cases cited therein. Regardless of the approach taken, the factual
analysis is the same.
Serial No. 74/623,599
3
claim under Section 2(f) of the Act, is an implicit
acknowledgment that STORAGE SYSTEM is generic; that,
therefore, the crucial question is whether the adjective
STACKABLE is generic for applicant’s office furniture; that
an adjective can be a generic designation; and that, in
this case, STACKABLE is an adjective that is a generic
designation for a category of office furniture. In support
of her position, the Examining Attorney submitted excerpts
from the LEXIS/NEXIS database and copies of sales catalogs.
She referenced an excerpt from Webster’s Ninth New
Collegiate Dictionary (1985) defining “stack” as, inter
alia, “vt. (1)(a) to arrange in a stack: pile (b) to pile
in or on,” and STACKABLE as “adj. easily stacked.”
Following are several examples of the LEXIS/NEXIS
excerpts submitted by the Examining Attorney:
The company also has designed stackable chairs
that just may be the vision of the future. [The
Times-Union, February 26, 1995.]
Any movable [furniture item] that consists of
steel for at least 80 per cent is classified as
steel furniture. With the stackable table as
maybe the only exception: about half of the
product (the table top) consists of wood. [Money
Clips, September 2, 1995.]
… relatively inexpensive stackable shelving may
adjust the height of a computer monitor as well
as an expensive, electronically adjustable
monitor stand. [New Hampshire Sunday News, March
24, 1996.]
Serial No. 74/623,599
4
Workers haven’t yet built the 7,000 square feet
of floor, much less moved in the ergonomic
furniture, stackable walls, and individual
climate-control modules. [Business Week,
November 20, 1995.]
The line includes easy-to-move chairs and tables
on wheels, stackable benches which double as
ottomans, … [The San Francisco Examiner,
September 24, 1995.]
Until the, the fix for most workers may be to
limp along with stackable computer furniture with
a lot of cables hanging out the back … [Open
Computing, November 23, 1994.]
Landscape your back yard with outdoor sports
cushions, lawn bags, stackable molded furniture,
… [Chicago Tribune, February 7, 1993.]
In keeping with the something-for-everyone theme,
there are wine racks and storage systems for
every taste and budget. Wine racks can vary from
a plastic milk carton in your closet to …
stackable chrome racks … stackable wooden cellar
cubes. [The Dallas Morning News, May 17, 1996.]
Since Courtney’s old room had been littered with
toys and clothes, she needed usable, accessible
storage systems … Design conscious parents can
browse at Limn … for the elegant stackable drawer
units … [The San Francisco Chronicle, November
13, 1991.]
In contrast to other storage systems, stackable
plastic cubes that take up a lot of room on
shelves, theirs is an easily transportable
plastic sleeve … [The New York Times, August 14,
1986.]
The catalogs submitted by the Examining Attorney include
advertisements for various types of furniture referred to
Serial No. 74/623,599
5
as “stackable,”3 including, “stackable data racks,”
“stackable shelf file,” “stackable cabinets,” and
“stackable shelf bin.”
Applicant concedes that “[a] subcategory of office
furniture is ‘storage systems,’ a term that Applicant has
disclaimed.” [Response of September 20, 1996.] However,
applicant contends that “stackable” is merely descriptive
of a characteristic of its goods, rather than being the
generic name for a category of goods; that the dictionary
includes several different definitions for “stackable” and
“there is no evidence to indicate which meaning is
attributed to it by the relevant public when it is used
with the suffix ‘storage system’”; that “stackable” is only
merely descriptive because it has been allowed to register
on the Supplemental Register, pointing to third-party
registrations4; and that applicant’s competitors do not need

3 We note that one such catalog, J.C. Penney, indicates that the term
“Sturdi-Stackables is a registered trademark. As this composite mark
differs from the applied-for mark herein, it does not effect our
consideration of the issue before us.
4 Applicant’s evidence of third-party registrations is not in the proper
form and, thus, has not been considered. In order to make
registrations of record, soft copies of the registrations themselves,
or the electronic equivalent thereof, i.e., printouts of the
registrations taken from the electronic records of the Patent and
Trademark Office’s (PTO) own data base, must be submitted. See,
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). We hasten to add
that our decision would remain the same even if we had considered these
third-party registrations. The issuance of a registration does not
signify the government giving its imprimatur to the mark concerned. In
re Old Glory Condom Corp., 26 USPQ2d 1216, 1220 (TTAB 1993).
Serial No. 74/623,599
6
to use the term STACKABLE STORAGE SYSTEM in referring to
competing products.5 In support of its position that
STACKABLE STORAGE SYSTEM has various meanings to the
purchasing public, applicant submitted excerpts of articles
from the LEXIS/NEXIS database6 and referred to the same
dictionary definition of “stack” and “stackable” submitted
by the Examining Attorney.7
Our primary reviewing court has set forth a two-step
inquiry to determine whether a mark is generic: first, what
is the genus (category or class) of goods at issue?
Second, is the term sought to be registered understood by
the relevant public primarily to refer to that genus
(category or class) of goods? H. Marvin Ginn Corporation
v. International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986). With respect to

5 Applicant has submitted no persuasive evidence in this regard.
6 Applicant’s LEXIS/NEXIS evidence includes one article that uses the
term STACKABLE STORAGE SYSTEM to refer to applicant’s goods, and
several articles that refer to modular furniture. This does not
support applicant’s contentions regarding the “various meanings” of the
term STACKABLE STORAGE SYSTEM. To the extent that applicant is
attempting to show that “modular” is the relevant generic designation
for the goods involved herein, such a finding is unwarranted on this
record and applicant has made no argument in this regard.
7 We note that the definition of “stack” includes several additional
meanings not quoted herein. As the issue of genericness is determined
in connection with the identified goods rather than in the abstract, we
find the unquoted meanings of little relevance to the case before us as
purchasers are unlikely to attribute those meanings to the word
STACKABLE in the context herein. To the extent that applicant is
arguing that the multiple meanings render the term ambiguous or a
double entendre, applicant’s argument is not well-taken.
Serial No. 74/623,599
7
genericness, the Office has the burden of proving
genericness by “clear evidence” thereof. In re Merrill
Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987).
To be found generic, a term does not have to
specifically name a narrow category as long as the goods or
services are encompassed within the broad term. For
example, in In re Analog Devices, 6 USPQ2d 1808 (TTAB
1988), aff’d. unpublished, 871 F.2d 1097, 10 USPQ2d 1879
(Fed. Cir. 1989), the Board held that the term ANALOG
DEVICES named a category or class of devices having analog
capabilities and was generic for a number of products such
as operational amplifiers, power supplies, converters,
transducers, switches, etc., some of which were in the
nature of analog devices. In response to applicant’s
argument that the term ANALOG DEVICES is a nebulous and
vague one, the Board responded, at 1810:
However, while we readily concede that the
category of products which the term “analog
devices” names encompasses a wide range of
products in a variety of fields, we do not
believe this fact enables such a term to be
exclusively appropriated by an entity for
products, some of which fall within that category
of goods. For example, while terms such as
“digital devices,” “computer hardware,” “computer
software,” and “electronic devices,” just to name
a few, may be broad and even nebulous terms,
nevertheless, these terms may not be exclusively
Serial No. 74/623,599
8
appropriated but must be left for all to use in
their ordinary generic sense.
The evidence submitted by both applicant and the
Examining Attorney indicates that STACKABLE is a term
commonly used to refer to furniture that can be stacked
either for use or for storage; and that this term
identifies a category of use that is applicable to all
different forms of furniture, for example, chairs, walls,
shelving, tables, computer tables, etc. We find that the
evidence of record supports the conclusion that STACKABLE
STORAGE SYSTEM is the generic name of a category of goods,
namely, office furniture comprising a “storage system” that
may be “stacked” for use and/or for storage; and that when
STACKABLE STORAGE SYSTEM is considered in connection with
applicant’s identified goods, the relevant public will
understand the term in its generic sense.
Serial No. 74/623,599
9
Decision: The refusal to register on the ground that the
applied-for mark is generic in connection with the
identified goods is affirmed.
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board