PMC Stonecare Enterprises, Inc.

Trademark Trial and Appeal Board

Nov 23, 2004

No. 78174944 (T.T.A.B. Nov. 23, 2004)

Mailed: 11/23/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re PMC Stonecare Enterprises, Inc.
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Serial No. 78174944
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Harvey V. McGahey of McGahey & McGahey for applicant.
Caroline Fong Weimer, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
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Before Quinn, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by PMC Stonecare Enterprises,
Inc. to register the mark STONE WIPES for “stone and rock
cleaning, sealing and polishing compounds in disposable
towels.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, if applied to applicant’s goods,
1 Application Serial No. 78174944, filed October 16, 2002, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78174944
2
would be merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant, in urging reversal of the refusal, asserts
that the Office has registered many third-party “WIPES”
marks which are similar to the one sought to be registered
by applicant.2 Applicant contends that its mark is novel
and is not used by consumers to identify applicant’s
product. Applicant argues as follows (Brief, p. 5):
If the applicant had requested a
registration of a mark such as “stone
cleaning wipes” or “stone polishing
wipes,” then applicant would accept the
examiner’s decision as well taken.
However, in light of the fact that
“stone wipes” is a new and novel
combination not heretofore found in
public use prior to the filing date of
the mark, and since suggestive
terminology with a trademark has not
been sufficient to prevent its
registration in the past, and since the
Patent and Trademark Office has
registered many names with similar
2 Applicant has merely listed the registrations, providing the
registration number, the mark registered and the date of
registration. Generally, a mere listing is insufficient to make
such registrations of record. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n.2 (TTAB 1998). The examining attorney, however, did
not object to this evidence, but rather treated it as if properly
made of record. The examining attorney recognizes that the
registrations will be considered (Brief, p. 5, n. 2), and these
registrations are deemed to be stipulated into the record. In re
Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n. 3
(TTAB 2001). They have been considered to be of record for
whatever probative value they merit.
Ser No. 78174944
3
suggestiveness attributes related to
the term “wipes,” it is respectfully
requested that the Appeals Board
overturn the final decision of the
Examining Attorney and allow the mark
“stone wipes” to be registered.
During the prosecution of the application, applicant
submitted the following disclaimer: “No claim is made to
the exclusive right to use ‘wipes’ or ‘stone’ apart from
the mark as shown.” The examining attorney declined to
enter the proposed disclaimer.
The examining attorney maintains that the mark sought
to be registered clearly describes the nature of the goods,
that is, cleaning and polishing wipes for stones. The
individual words “stone” and “wipes” are descriptive and,
according to the examining attorney, the combination of the
terms is no less descriptive. The examining attorney is
not persuaded by the third-party registrations, pointing
out that some are registered on the Supplemental Register,
and that, in any event, she is not bound by the prior
decisions and actions of other examining attorneys. In
support of the refusal, the examining attorney submitted a
dictionary definition of the term “wipes.”
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
Ser No. 78174944
4
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development 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 or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that
“[t]he question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
Ser No. 78174944
5
goods and services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002); see also In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corporation, 226 USPQ 365 (TTAB
1985). Stated another way, as the Board has explained:
....the question of whether a mark is merely
descriptive must be determined not in the
abstract, that is, not by asking whether one
can guess, from the mark itself, considered in
a vacuum, what the goods or services are, but
rather in relation to the goods or services for
which registration is sought, that is, by
asking whether, when the mark is seen on the
goods or services, it immediately conveys
information about their nature.
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial
impression. If each component retains its descriptive
significance in relation to the goods or services, the
combination results in a composite that is itself
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; In re Sun
Ser No. 78174944
6
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs]; In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) [FOOD &
BEVERAGE ONLINE merely descriptive of news information
services for the food processing industry]; and In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) [SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays].
The term “wipe” is defined, in relevant part, as
“something, such as a towel or tissue, used for wiping.”
(www.dictionary.com).
We find that the mark sought to be registered is
merely descriptive of the nature of the goods, that is,
that the goods are compound-impregnated wipes used in
connection with cleaning and polishing stones. Each of the
terms “stone” and “wipes” is descriptive when applied to
applicant’s product, and applicant appears to concede as
much by its offer to disclaim each of the terms apart from
the mark.3 We also find that these individual words do not
somehow lose this descriptiveness in the combination STONE
3 As pointed out by the examining attorney, an entire mark may
not be disclaimed. If a mark is not registrable as a whole, a
disclaimer will not make it registrable. TMEP § 1213.06.
Ser No. 78174944
7
WIPES. While a combination of words may be registrable if
it creates a unitary mark with a unique, nondescriptive or
incongruous meaning, in this case each component of
applicant’s mark STONE WIPES retains its descriptive
significance when used in the combination, and the
combination as a whole is also merely descriptive of
applicant’s goods. In making this determination we note
applicant’s acknowledgement that “stone cleaning wipes” or
“stone polishing wipes” would be merely descriptive. In
this connection, we do not view the mere deletion of either
of the words “cleaning” or “polishing” to magically
transform STONE WIPES into an inherently distinctive mark.
See In re Abcor Development Corp., supra [GASBADGE is at
least descriptive for “gas monitoring badge”; “the users of
language have a universal habit of shortening full names--
from haste or laziness or just economy of words” (Rich, J.,
concurring)]. When applied to the specific goods listed in
the application, no imagination or speculation is required
to conclude that the towels (wipes), impregnated with
applicant’s compound, are used to clean or polish stones.
We agree with the examining attorney’s assessment that
the third-party registrations are not persuasive of a
different result on the issue of mere descriptiveness. The
probative value of the listing supplied by applicant is
Ser No. 78174944
8
significantly diminished by the failure to also indicate
the goods and/or services listed in each registration.
Moreover, as pointed out by the examining attorney, some of
the registrations issued on the Supplemental Register due
to the descriptiveness of the subject marks. In any event,
each case must be decided on its own merits, and neither
the Board nor the examining attorney is bound by the prior
actions of the Office. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if
some prior registrations had some characteristics similar
to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”].
We find that the mark STONE WIPES, if used in
connection with stone and rock cleaning, sealing and
polishing compounds in disposable towels, would be merely
descriptive as contemplated under Section 2(e)(1). The
fact that applicant may be the first and/or only entity to
use, or intend to use the term STONE WIPES for such goods
is not dispositive where, as here, such term unequivocally
projects a merely descriptive connotation. See In re
Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994).
Decision: The refusal to register is affirmed.