THIS OPINION IS A
PRECEDENT OF THE TTAB
Mailed: September 13, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Positec Group Limited
_____
Serial No. 77920346
_____
Scot A. Duvall of Middleton Reutlinger,
for Positec Group Limited.
Alyssa Paladino Steel, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____
Before Bucher, Wellington and Hightower,
Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Positec Group Limited (“applicant”) seeks registration on the Principal Register of
the designation SUPERJAWS (in standard character format) for the following goods:
machine tools, namely, jaws for use in the precision
clamping of work pieces; workbench accessories, namely,
metal attachable machine tool holder in the nature of
clamps, jaws, and vices for holding items to be welded;
workbench accessories, namely, workbench attachments
in the nature of machine tool holders in International
Class 7; and
hand tools, namely, vices, metal vice jaws, and clamps;
workbench accessories, namely, workbench attachments
in the nature of tool holders, particularly, clamps, jaws
and vices for holding logs and timber for sawing, carving,
Serial No. 77920346
2
and cutting; workbench accessories, namely, workbench
attachments in the nature of tool holders for holding
chainsaw blades for sharpening; workbench accessories,
namely, workbench attachments in the nature of tool
holders, particularly, clamps, jaws, and vices for clamping
of work pieces; workbench accessories, namely, non-metal
workbench attachments in the nature of tool holders,
particularly, clamps, vices, and jaws for mounting saws;
workbench accessories, namely, attachable non-metal tool
holders in the nature of clamps, jaws, and vices for
holding items to be cut; workbench accessories, namely,
metal attachable tool holders in the nature of clamps,
jaws, and vices for holding items to be welded; non-metal
tool stands in International Class 8.1
The examining attorney has refused registration of applicant’s proposed mark
under Trademark Act Section 2(e)(1) because the proposed mark merely
describes a characteristic, quality, function, feature, purpose or use of the
applicant’s goods. 15 U.S.C. § 1052(e)(1).
After the examining attorney made the refusal final, applicant appealed to this
Board. We affirm the refusal to register.
Applicant argues that the examining attorney has erroneously construed the
word “Jaws” as merely descriptive and the word “Super” as laudatory, when the
terms considered individually or in combination are at worst suggestive; that the
examining attorney has erroneously applied a per se rule that the term “Super,”
when combined with a merely descriptive term must result in a composite that is
descriptive; that the majority of third-party registrations in the record confirm that
the word “Super” is not merely descriptive; that the combined term “Superjaws” is a
1 Application Serial No. 77920346 was filed on January 26, 2010, under Section 1(b) of the
Act based upon applicant’s claim of a bona fide intention to use the mark in commerce.
Serial No. 77920346
3
unitary term, which operates here as a double entendre, thereby creating an
inherently distinctive mark; and finally, applicant argues that the examining
attorney failed to resolve in applicant’s favor, as she must, the significant doubt
herein as to the determination of mere descriptiveness.
By contrast, the examining attorney contends that applicant actually uses the
term “Jaws” to identify its goods in both International Classes 7 and 8; that
applicant’s use of “the term ‘super’ describes the extreme or excessive strength that
the applicant’s ‘jaws’ may have compared to average jaws and other machine tools
and hand tools”; that the composite term is descriptive of applicant’s goods and does
not create a unique, incongruous, or non-descriptive meaning in relation to the
named goods; that the third-party registrations simply illustrate that the words
“super” and “jaws” are individually descriptive; specifically, that while the term
“super” may have once been suggestive (as reflected in some older third-party
registrations), it has lost its distinguishing and origin-denoting characteristics
through use in a descriptive sense over a period of time, and is now regarded by the
purchasing public as nothing more than a merely descriptive designation; that
applicant’s proposed mark, “SuperJaws,” is not a double entendre and is not
inherently distinctive; and that in the present case, the evidence of record leaves no
doubt but that the proposed mark is merely descriptive.
A. The applicable law
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
Serial No. 77920346
4
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978).
Whether a mark 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 on or in connection with the goods or services, and the
possible significance that the mark would have to the average purchaser of the
goods or services because of the manner of its use. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); 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 goods or services are
will understand the mark to convey information about them.” In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002), cited with approval in DuoProSS Meditech
Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed.
Cir. 2012).
We must, of course, view the proposed mark as a whole. See, e.g., DuoProSS,
103 USPQ2d at 1756. When two or more merely descriptive terms are combined, the
determination of whether the composite mark also has a merely descriptive
significance turns on whether the combination of terms evokes a new and unique
commercial impression. If each component retains its merely descriptive
Serial No. 77920346
5
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive
of computer software for managing a database of records that could include patents
and for tracking the status of the records by means of the Internet); In re Petroglyph
Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“because the combination of the
terms does not result in a composite that alters the meaning of either of the
elements, refusal on the ground of descriptiveness is appropriate”), cited with
approval in Dalton v. Honda Motor Co., 425 F. App’x 886, 893 (Fed. Cir. 2011) (not
precedential); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING
merely descriptive of real estate brokerage, real estate consultation and real estate
listing services); In re Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); Cf. In re Gould Paper
Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987) (finding
SCREENWIPE generic as applied to pre-moistened antistatic cloths for cleaning
computer and television screens).
B. Evidence of Record
The examining attorney included in the record various dictionary entries
showing that applicant’s use of the term “super” describes the extreme or excessive
strength that the applicant’s “jaws” may have compared to average grasping power
tools or other machine tools and hand tools:
Serial No. 77920346
6
su•per
Pronunciation: (soo'pur),—adj.
1. of the highest degree, power, etc.
2. of an extreme or excessive degree.
3. Informal.very good; first-rate; excellent.
4. (of measurement) superficial.
5. superfine.
super-
a prefix occurring originally in loanwords from Latin, with the basic meaning “above, beyond.” Words formed
with super- have the following general senses: “to place or be placed above or over” (superimpose;
supersede), “a thing placed over or added to another” (superscript; superstructure; supertax), “situated over”
(superficial; superlunary) and, more figuratively, “an individual, thing, or property that exceeds customary
norms or levels” (superalloy; superconductivity; superman; superstar), “an individual or thing larger, more
powerful, or with wider application than others of its kind” (supercomputer; superhighway; superpower;
supertanker), “exceeding the norms or limits of a given class” (superhuman; superplastic), “having the
specified property to a great or excessive degree” (supercritical; superfine; supersensitive), “to subject to (a
physical process) to an extreme degree or in an unusual way” (supercharge; supercool; supersaturate), “a
category that embraces a number of lesser items of the specified kind” (superfamily; supergalaxy), “a
chemical compound with a higher proportion than usual of a given constituent” (superphosphate) 2
super
adjective \ˈsü-pər\
1 a : of high grade or quality
b —used as a generalized term of approval
2: very large or powerful
3: exhibiting the characteristics of its type to an extreme or excessive degree 3
jaw Pronunciation: ( jô), —n.
1. either of two bones, the mandible or maxilla, forming the framework of the mouth.
2. the part of the face covering these bones, the mouth, or the mouth parts collectively: My jaw is
swollen.
3. jaws, anything resembling a pair of jaws or evoking the concept of grasping and holding: the
jaws of a gorge; the jaws of death.
4. Mach.
a. one of two or more parts, as of a machine, that grasp or hold something: the jaws of a vise.
b. any of two or more protruding parts for attaching to or meshing with similar parts. 4
2 RANDOM HOUSE UNABRIDGED DICTIONARY, http://dictionary.infoplease.com/super, as
attached to Office Action of April 9, 2012.
3 MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-
webster.com/dictionary/super, as attached to Office Action of April 26, 2010.
4 RANDOM HOUSE UNABRIDGED DICTIONARY, http://dictionary.infoplease.com/super, as
attached to Office Action of April 9, 2012.
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Serial No. 77920346
8
or aspect of the goods) when part of compound or composite marks
registered in connection with goods in International Classes 7 and 8:
Mark Goods Comments
SUPERSTART for “solid state AC motor
starters” in Int. Class 7;
Owned by TB Woods
Enterprises, Inc.; entire
mark registered under
§ 2(f) of the Act.7
SUPERTAP for “tools for use with power
operated machines, namely
taps” in Class 7;
Owned by
Kennametal Inc.; entire
mark registered under
§ 2(f) of the Act.8
SUPERLIFT for “hoists” in International
Class 7;
Owned by Genie
Industries, Inc.; entire
mark registered under
§ 2(f) of the Act.9
SUPER HOIST for “power operated lifts for
material handling” in
International Class 7;
Owned by Genie
Industries, Inc.; the
word “Hoist” is
disclaimed; issued on
Supplemental Reg.10
SUPER CHOKE for “petroleum industry
equipment, namely, remote
adjustable high-pressure
chokes with positive closure”
in Class 7;
Owned by M-I L.L.C.;
the word “Choke” is
disclaimed; entire mark
registered under § 2(f)
of the Act.11
SUPER TOOL for “compact folding tool
comprising knife, pliers, and
multiple blades, and leather
and fabric sheaths therefor” in
Class 8;
Owned by
Leatherman Tool
Group, Inc.; the word
“Tool” is disclaimed;
entire mark registered
under § 2(f) of the Act.12
SUPERWINCH for, inter alia, “winches and
parts therefore; electric
Owned by
Superwinch, LLC;
7 Registration No. 1686040 issued on May 12, 1992; renewed.
8 Registration No. 1950685 issued on January 23, 1996; renewed.
9 Registration No. 2086891 issued on August 12, 1997; renewed.
10 Registration No. 2076560 issued on July 1, 1997; renewed.
11 Registration No. 2181817 issued on August 18, 1998; renewed.
12 Registration No. 2440250 issued on April 3, 2001; renewed.
Serial No. 77920346
9
Mark Goods Comments
winches, hydraulic winches;
winch repair kits primarily
composed of winch component
parts” in Class 7;
issued on Supplemental
Reg.13
SUPER FEEDER for “automated pet food
dispensers namely,
mechanized pet feeders” in
International Class 7;
Owned by Super-Feed
Enterprise, a
partnership; the word
“Feeder” is disclaimed;
entire mark registered
under § 2(f) of the Act.14
SUPER CHISEL for “saw chain for chain saws”
in Int. Class 7;
Owned by Blount,
Inc.; entire mark
registered under § 2(f)
of the Act.15
Superplow for “snow plows” in
International Class 7;
Owned by Ponderosa
Properties LLC; issued
on Supplemental Reg.16
SUPER V for “snow plows and plow
blades for vehicles” in
International Class 7;
Owned by Meyer
Products, Inc.; issued
on Supplemental Reg.17
SUPERKNIFE for “hand held cutting tools,
namely, knives and shears;
blades for knives and shears;
belt clips for attaching knives
to tool belts; and knife blade
sheaths” in Int. Class 8;
Owned by Fiskars
Brands, Inc.; entire
mark registered under
§ 2(f) of the Act.18
13 Registration No. 2865813 issued on July 20, 2004; Section 8 affidavit (six-year) accepted.
14 Registration No. 2913097 issued on December 21, 2004; Section 8 affidavit accepted. In
an application filed by the same partnership six months earlier, infra at 13, FN 38
(Registration No. 2812672 issued on February 10, 2004; renewed), the somewhat different
treatment can be explained by the fact that the word “Feed” is not generic for “feeders” and
the free-style, literal elements in this special form mark are surrounded by a significant
design element.
15 Registration No. 3352104 issued on December 11, 2007. We also note that Blount, Inc. is
the owner of Registration No. 1083179 issued on January 24, 1978, for the mark SUPER
GUARD, for identical goods, as cited by applicant, infra at 11, FN 25. With similarly
situated marks issuing thirty years apart, here the difference in treatment is that the 2007
registration was issued under Section 2(f) of the Act.
16 Registration No. 3383528 issued on February 12, 2008.
17 Registration No. 3387162 issued on February 19, 2008.
18 Registration No. 3444223 issued on June 10, 2008.
Serial No. 77920346
10
Mark Goods Comments
SUPER SPRAYER for “gardening tools, namely,
sprayers; hand-operated
sprayers for insecticide; hand-
pumped sprayers for lawn and
garden use” in Class 8;
Owned by H.D.
Hudson Manuf. Co.; the
word “Sprayer” is
disclaimed; entire mark
registered under § 2(f)
of the Act.19
SUPER CONE for “rock handling machines,
namely, mobile rock crushing
machines” in International
Class 7.
Owned by
Construction Equip.
Co.; the word “Cone” is
disclaimed; issued on
Supplemental Reg.20
Similarly, the following third-party registrations placed into the record by
the examining attorney allegedly show how the Office typically treats the word
“Jaw(s)” for a variety of grasping power tools in International Class 7:
Mark Goods Comments
HYDRO-JAW for “air powered drilling tools,
namely, drills and hole
openers used in the oil, gas,
foundation drilling,
construction and horizontal
drilling industries” in
International Class 7;
Owned by Center
Rock, Inc.; issued on
Supplemental Reg.21
JAWS for “power operated rescue
tools, namely, spreaders and
power units therefore” in
International Class 7;
Owned by Hale
Products, Inc.; issued
on Supplemental
Reg.22
19 Registration No. 4001269 issued on July 26, 2011.
20 Registration No. 4092488 issued on January 24, 2012.
21 Registration No. 3433439 issued on May 20, 2008.
22 Registration No. 3812291 issued on June 29, 2010. Hale Products, Inc. also claims
ownership of the mark JAWS OF LIFE for rescue tools (the word “Jaws” is disclaimed),
Registration No. 1017871 issued on August 12, 1975; second renewal.
Serial No. 77920346
11
Mark Goods Comments
SMARTJAW for “packaging equipment
components, namely, seal
jaws, pneumatic jaw controls
and pneumatic jaw actuators”
in International Class 7.
Owned by Matrix
Packaging
Machinery, Inc.;
entire mark
registered under
§ 2(f) of the Act.23
By contrast, applicant points to copies of extant third-party registrations it
timely made of record for tools in International Classes 7 and 8 having “Super-”
formative marks in which the term “Super” is not disclaimed. Applicant concludes
that this demonstrates that the United States Patent and Trademark Office
does not find combined terms beginning with the designation “Super” to be
merely descriptive, and asserts that these registrations cast further doubt on the
proposition that applicant's applied-for mark is merely descriptive of its goods. The
following registrations were included in this showing:
Mark Goods Comments
SUPER-CUT for “diamond tools for dressing
abrasive wheels, diamond core
drills, diamond core drill coolant
heads, diamond reamers, diamond
countersinks, magnetic chucks with
demountable diamond rings,
diamond wheel dressers, rotary
diamond saws” in International
Classes 7 and 8;
Owned by Saint-Gobain
Abrasives Limited, a
U.K. corporation24
SUPER GUARD for “saw chain for chain saws” in International Class 7;
Owned by Blount, Inc.25
SUPER LOOP for “novelty twisting textile machine” in International Class 7;
Owned by Textured Yarn
Co., Inc.26
23 Registration No. 4113719 issued on March 20, 2012.
24 Registration No. 0806675 issued on April 5, 1966; third renewal.
25 Registration No. 1083179 issued on January 24, 1978; second renewal.
26 Registration No. 1131214 issued on February 26, 1980; second renewal.
Serial No. 77920346
12
Mark Goods Comments
SUPER LIFE for “saw blades for power tools” in International Class 7;
Owned by Unicut
Corporation27
SUPER-GRIP for “collets and collet pads for use
with machine tools” in International
Class 7;
Owned by Positrol, Inc.28
SUPER PAC for “construction and/or road-building vehicles, namely
compaction rollers” in
International Class 7;
Owned by Volvo Motor
Graders Limited.29
SUPER TAPER for “hair clippers” in International Class 8;
Owned by Wahl Clipper
Corp.; the word “Taper”
is disclaimed.30
SUPERKROME for “hand tools, namely,
combination wrench sets” in
International Class 8;
Owned by SK Hand Tool
LLC 31
SUPER SAWZALL for “hand held power saws” in International Class 7;
Owned by Milwaukee
Electric Tool Corp.32
SUPERPRO for “hand tools; namely, hand saws,
screwdrivers, hacksaw blades and
wrenches” in International Class 8;
Owned by Great Neck
Saw Manufacturers,
Inc.33
SUPER MAXBIT for “drilling bits for use in drilling for water wells, for anchors and for
pilings” in International Class 7;
Owned by Mitsubishi
Materials Corporation34
SUPERFELL for “power-operated tools, namely
tree felling saws” in International
Class 7;
Owned by Hultdin
System AB, a Swedish
corporation35
SUPER-PRECISION for “machine tools, namely,
grinders” in Int. Class 7;
Owned by Hardinge
Inc.36
27 Registration No. 1245027 issued on July 12, 1983; renewed.
28 Registration No. 1246859 issued on August 2, 1983; renewed.
29 Registration No. 1378843 issued on January 21, 1986; renewed.
30 Registration No. 1452948 issued on August 18, 1987; renewed.
31 Registration No. 1594911 issued on May 8, 1990; second renewal.
32 Registration No. 1677368 issued on March 3, 1992; second renewal.
33 Registration No. 1863512 issued on November 22, 1994; renewed.
34 Registration No. 1933195 issued on November 7, 1995; renewed.
35 Registration No. 2040891 issued on February 25, 1997; renewed.
36 Registration No. 2289167 issued on October 26, 1999; renewed.
Serial No. 77920346
13
Mark Goods Comments
for “machines and power operated
tools for driving or fastening nails,
fasteners or screws, namely, nail
guns; pneumatic nailing machines
and tools, namely, pneumatic
nailers” in International Class 7;
Owned by Max Co., Ltd.,
a Japanese corporation37
for “automated pet food dispensers,namely, mechanized pet feeders” in
International Class 7;
Owned by Super-Feed
Enterprise, a
partnership; the word
“Feed” is disclaimed.38
for “power tools, namely, drills,
screwdrivers and nailing machines
for driving or fastening nails,
fasteners or screws; pneumatic
nailing machines” in International
Class 7;
Owned by Max Co., Ltd.,
a Japanese corporation39
SUPERCRAFT for “manually operated hammers,
excluding drill chucks for power-
operated tools” in International
Class 8;
Owned by Erwin Halder
KG, of Germany40
SUPEROLL for “machine tools for super
finishing and hardening of metal
surfaces, namely, roller burnishers
and roller burnishing tool heads
attachable to roller burnishers” in
Int. Class 7;
Owned by Sugino
Machine Limited, a
Japanese corporation41
37 Registration No. 2419784 issued on January 9, 2001; renewed.
38 Registration No. 2812672 issued on February 10, 2004; renewed.
39 Registration No. 2879374 issued on August 31, 2004; Section 8 affidavit accepted and
Section 15 affidavit acknowledged.
40 Registration No. 3285462 issued on August 28, 2007; Section 8 affidavit accepted and
Section 15 affidavit acknowledged.
41 Registration No. 3317721 issued on October 23, 2007.
Serial No. 77920346
14
Mark Goods Comments
SUPERFLOW for, inter alia, “power-operated
coolant dispensers for machine
tools” in International Class 7;
Owned by Mazak
Corporation42
SUPERBUG for “machines and machine tools,
namely, automatic swimming
pool cleaners and parts therefor;
automatic swimming pool
sweepers; devices for swimming
pools, namely, swimming pool
vacuums and swimming pool
vacuum hoses; and structural
component parts of all the
aforesaid goods” in International
Class 7.
Owned by Arengo 309
(PTY) LIMITED of South
Africa43
Likewise, applicant included copies of similarly-structured “Super-”
formative marks registered in connection with goods in other classes (related to
International Class 7 and 8) that it contends are of the same type as the goods
applied for herein:
Mark Goods Comments
SUPER COIL for “key holders made of elastic
coil e.g., polyurethane, having
metallic holders attached
thereto” in International Class
20;
Owned by QMP Enter.
Inc.; the word “Coil” is
disclaimed.44
SUPER 1200 for “cold finished steel bar for
machining” in International
Class 6;
Owned by Niagara
LaSalle Corp.45
SUPER HOG for “welded steel mill chain for
conveyors in sawmills and
paper mills” in Int. Class 6;
Owned by Conveyco
Mfg. Co.46
42 Registration No. 3491118 issued on August 26, 2008.
43 Registration No. 3785520 issued on May 4, 2010.
44 Registration No. 1063900 issued on April 19, 1977; second renewal.
45 Registration No. 1610378 issued on August 21, 1990; second renewal.
46 Registration No. 1678255 issued on March 10, 1992; second renewal.
Serial No. 77920346
15
Mark Goods Comments
SUPER ALURITE for “coated metal roofing and
siding” in International Class 6;
Owned by Fabral,
Inc.47
SUPER SLIDERS for “furniture casters, namely
glides made of plastic” in
International Class 20;
Owned by Waxman
Consumer Products
Group, Inc.48
SUPER STUD for “metal structural beams for
concrete form assemblies,
namely, beams used externally
and temporarily as framing
supports for the construction of
concrete form assemblies” in
International Class 6;
Owned by Wilian Holding
Co.49
SUPER STRAP for “cargo restraint devices in
the nature of plastic fixtures to
which restraint bands are
attached” in International
Class 20;
Owned by Logistick, Inc.;
the word “Strap” is
disclaimed.50
SUPER MULTI-CLIP for “non-metal table skirting
clips” in International Class 20;
Owned by FASTENation,
Inc.51
SUPER BRITE
for “aluminum alloys in the
form of sheets and plates” in
International Class 6;
Owned by
Commonwealth
Aluminum Metals, LLC;
the word “Bright” is
disclaimed.52
SUPER EDGE for “flexible cutting line for use
in lawn and garden string
trimmer spools on rotary
trimmers” in Int. Class 22.
Owned by Proulx Manuf.,
Inc.; the word “Edge” is
disclaimed.53
Again, applicant noted that there were no disclaimers of the word “Super” in
any of these registrations.
47 Registration No. 1953442 issued on January 30, 1996; renewed.
48 Registration No. 1988909 issued on July 23, 1996; renewed.
49 Registration No. 2491660 issued on September 25, 2001; renewed.
50 Registration No. 2624308 issued on September 24, 2002; renewed.
51 Registration No. 3448421 issued on June 7, 2008.
52 Registration No. 3521292 issued on October 21, 2008.
53 Registration No. 3813016 issued on July 6, 2010.
Serial No. 77920346
16
C. Analysis
Jaws
The term “jaws” appears twice in applicant’s International Class 7 identification
of goods (“machine tools, namely, jaws ... ; workbench accessories, … in the nature
of … jaws …”) and six times in its International Class 8 identification of goods (e.g.,
hand tools, namely, … metal vice jaws, … ; workbench accessories … in the nature
of … jaws …”). This is consistent with the dictionary definitions of the word “Jaw,”
particularly entries referring to machines having two or more opposable parts
capable of grasping or holding something, and we find that the term “jaws”
describes equally well applicant’s machine tools in International Class 7 and hand
tools in International Class 8. Similarly, in the three registrations listed above,
where the term “Jaw” (or “Jaws”) has been adopted for use in connection with
grasping machines in International Class 7 (even those where this exact
terminology “jaw” does not appear in the identification of goods), the
registrations of the marks issued on the Supplemental Register or on the
Principal Register based on evidence of acquired distinctiveness as to the entire
composite mark.
We acknowledge that not all the goods listed in applicant’s identification of
goods are identified as “jaws” and others are not clearly grasping tools.
However, if the mark is descriptive of some identified items – or even just one – the
whole class of goods still may be refused by the examiner. In re Chamber of
Commerce, 102 USPQ2d at 1220; In re Oppedahl & Larson LLP, 373 F.3d 1171,
Serial No. 77920346
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1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive
even if it does not describe the ‘full scope and extent’ of the applicant’s goods or
services.”) (citation omitted). If the Board affirms a refusal of an entire class based
on the descriptiveness of the mark for one or more goods in the class, then the
entire class will fail.
Hence, we find that the term “Jaws” as used in applicant’s mark is highly
descriptive of the listed goods, and standing alone the term “Jaws” might well
be generic for the goods.
“Super-” formative Marks
We turn then to the first word of applicant’s proposed compound word mark:
“super.” The record contains dictionary definitions of the word “super” along with
some helpful usage notes therefor. Not surprisingly, composite marks built from
“Super-” formatives have been previously discussed in various precedential
decisions. In fact, applicant and the examining attorney do seem to be in agreement
that there is no per se rule on how the United States Patent and Trademark Office
should treat the word “super.” In this regard, as to composite marks beginning with
the prefix, “super,” this Board had occasion more than a decade ago to provide some
helpful guidance on the sometimes unclear line of demarcation between such marks
that would be found merely descriptive and those that are, at worst, suggestive:
A general proposition which may be distilled from the
foregoing cases is that if the word “super” is combined
with a word which names the goods or services, or a
principal component, grade or size thereof, then the
composite term is considered merely descriptive of the
goods or services, but if such is not strictly true, then the
Serial No. 77920346
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composite mark is regarded as suggestive of the products
or services. Here, joining the laudatory word “super” with
the generic fabric name “silk” to form the term SUPER
SILK results in a composite which plainly has a meaning
identical to the meaning which ordinary usage would
ascribe to such words in combination. See, e.g., In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 110, 1111-
12 (Fed. Cir. 1987) * * *.”
Consequently, when considered in its entirety, the term
SUPER SILK would in a laudatory fashion immediately
describe, without conjecture or speculation, a significant
quality, characteristic or feature of any articles of
clothing, including dress shirts and sport shirts, made of
silk fabric. Purchasers and potential customers for such
goods would plainly understand, as asserted by the
Examining Attorney, that because shirts, like other items
of apparel, are commonly made of silk, the term SUPER
SILK designates goods made of an excellent, first-rate, or
superior grade of silk fabric and not, as suggested by
applicant, those produced from “a fabric that is similar
but superior to silk” (emphasis added).
In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002). We find this
distinction explains well the difference in result between many of the “Super-”
formative marks listed by applicant and those listed by the examining attorney.
Applicant makes much of the fact that there were no disclaimers of the
prefatory term “Super” in any of the third-party registrations it submitted.
However, especially in those registrations (having “Super-” formative composite
marks) that issued since the time Phillips-Van Heusen was decided, the follow-on
wording does not appear to fit the bar of the Phillips-Van Heusen description for
merely descriptive composites (“ … a word which names the goods or services, or a
principal component, grade or size thereof … ”).
Serial No. 77920346
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Rather, under the principles articulated in Phillips-Van Heusen, when the
leading word “Super” is joined with a suggestive term (e.g., “Strap” for “ … plastic
fixtures to which restraint bands [straps] are attached”; “Brite” for aluminum
sheets; or “Edge” for cutting line for use in string trimmer), the combination
remains suggestive.
Furthermore, we note that even the majority of the earlier composite marks
applicant listed that were registered before the decision in Phillips-Van Heusen
issued in March 2002 were similarly consistent54 with this guidance inasmuch as
these combined forms each appear to be highly suggestive, at worst, of the listed
goods.
As to at least a dozen marks on applicant’s second list of registrations, for goods
in International Classes 7 and 8, the composite marks are “unitary.” In the event
that only one word of a unitary mark should be found merely descriptive, it would
be inappropriate to disclaim that portion of the unitary mark. TMEP § 1213.05
(April 2013).
In substantially all of the registered “Super-” formative composite marks
placed into the record by the examining attorney, the second term in the composite
marks describes or even “names the goods” in International Classes 7 or 8. The
54 On the other hand, to the extent that there are copies of registrations placed into the
record that do not follow this guidance, while the United States Patent and Trademark
Office (USPTO) strives for a high level of consistency, we acknowledge that occasionally the
Register contains results that are not perfectly consistent. As the Federal Circuit has noted
on more than one occasion, that each case must be examined on its own merits against the
backdrop of the governing statute(s), and that the USPTO’s allowance of prior registrations
that may have some characteristics of the application at hand does not bind the USPTO.
In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); and
In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Serial No. 77920346
20
resulting composites plainly have a meaning identical to the meaning which
ordinary usage would ascribe to such words in combination. Accordingly, each of the
marks in these applications issued on the Supplemental Register or if on the
Principal Register, the entire mark was shown to have acquired distinctiveness
under Section 2(f) of the Act. Only in those cases where the “Super” preface and the
immediately-following, highly descriptive or generic term were separable elements
was the latter term disclaimed.
Finally, applicant repeatedly argues that the term SUPERJAWS immediately
evokes connotations of Superman or another superhero rather than laudatorily
describing these goods in an overarching sense. We find this “superhero” argument
to be without any basis in the record. There is nothing inherent in the structure
of the term “Superjaws,” or in the context in which the mark will be used, that
would prompt a result different than the other forty-five “Super-” formative marks
made a part of this record.
In the case at bar, rather than being propelled into visions of the iconic
superhero who is “faster than a speeding bullet” or “more powerful than a
locomotive” (arguments in applicant’s brief at 21), or even possibly inciting panic
over an unparalleled menace on Amity Island, we find the dictionary definitions of
“super” meaning “powerful,” “high-quality,” or “excellent” to be more relevant in this
construction.
In fact, we find that prospective consumers of the identified goods would readily
understand that applicant’s applied-for mark describes a superior vice system for
Serial No. 77920346
21
grasping and holding work pieces. The name “Superjaws” immediately and
intuitively conveys information about heavy-duty workbench accessories and
attachments having hundreds, if not thousands, of pounds of clamping pressure.
Accordingly, because we retain no doubt in the matter, we find that the term
SUPERJAWS is merely descriptive of applicant’s listed goods in International
Classes 7 and 8.
Decision: The refusal to register the SUPERJAWS applied-for mark under
Section 2(e)(1) of the Lanham Act is hereby affirmed.
