Ross M. Merritt

Trademark Trial and Appeal Board

Nov 8, 2000

No. 75416648 (T.T.A.B. Nov. 8, 2000)

Paper No.
12
GDH/gdh
11/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Merritt
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Serial No. 75/416,648
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Leon I. Edelson, Esq. for Ross M. Merritt.
Jesse W. Billings, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
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Before Hohein, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Ross M. Merritt has filed an application to register
the term "PUCKBOX" for "jewelry cases and boxes not made of
metal."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the

1 Ser. No. 75/416,648, filed on January 12, 1998, which alleges dates
of first use of August 29, 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/416,648
2
basis that, when used in connection with applicant's goods, the
term "PUCKBOX" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). It is not necessary that a term describe all of
the properties or functions of the goods or services in order
for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant
attribute or idea about them. Moreover, 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 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. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Ser. No. 75/416,648
3
Consequently, "[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Applicant, in his initial brief, acknowledges that the
Examining Attorney, in support of the refusal to register, has
made of record a definition from The American Heritage
Dictionary of the English Language (3rd ed. 1992) which, in
pertinent part, defines the word "puck" as "[a] hard rubber disk
used in ice hockey as the playing and scoring medium."
Applicant also notes that, with respect to ice hockey, such word
is defined by The Random House Dictionary of the English
Language (unabridged ed. 1973) as "a black disc of vulcanized
rubber for use in passing and shooting."2 In addition, applicant
has made of record a portion of the design patent for his
product, which is referred to therein as a "hockey puck case"
and is illustrated below:

2 Although such definition, being offered for the first time with the
applicant's initial brief, is technically untimely under Trademark
Rule 2.142(d), we have considered it inasmuch as it is settled that
the Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/416,648
4
While conceding, in light of the above, that the
appearance of his jewelry boxes and cases "can be similar to
that of a hockey puck, being black and round," applicant
stresses that such a "container is not designed for holding
hockey pucks ... but for holding small articles of jewelry or
other small items ...." Applicant contends, in consequence
thereof, that "the term 'PUCKBOX' in its appearance and use has
a bizarre or incongruous meaning as applied to the goods ... and
evoke[s] a unique commercial impression." In particular,
applicant asserts that such term "is incongruous in that the
ordinary purchaser would not expect to store items in a hockey
puck ... container, the dimensions of which do not allow one to
store 'pucks'."
We concur with the Examining Attorney, however, that
the term "PUCKBOX" is merely descriptive of a "jewelry case [or
box] that is small and round and looks like a hockey puck." As
succinctly and persuasively pointed out in the Examining
Attorney's brief:
The applicant's jewelry cases and boxes
are in the shape of a hockey puck. The
applicant has submitted a copy of [a portion
of] the design patent issued to the
applicant for the goods. .... The drawings
Ser. No. 75/416,648
5
show that the case, or box, is designed to
look like a hockey puck. The term "puck
box" [sic] aptly describes a characteristic
of the goods and the goods themselves; the
goods are identified as "boxes" and they
look like pucks.
....
The specimens show that the applicant
intends to create the commercial impression
in the consumer's mind that the box looks
like a puck. The specimens are labels that
claim the goods are "the coolest puck off
ice!" The applicant [thus] underscores the
descriptiveness of the mark by ensuring that
the consumer will understand that the box
looks like a puck.
The Examining Attorney accordingly concludes that the term
"PUCKBOX" merely describes one of the significant
characteristics of the applicant's goods.
As stated above, we agree that, when used on or in
connection with applicant's "jewelry cases and boxes not made of
metal," the term "PUCKBOX" immediately describes, without
conjecture or speculation, a significant characteristic or
feature of such goods, namely, that they are boxes resembling a
hockey puck. While, to be sure, a case or box shaped like a
puck would appear to be an unusual if not unique container for
keeping jewelry, such a novelty item, with its inherent appeal
to fans of ice hockey, is nevertheless aptly described as to its
appearance as a "PUCKBOX". As the evidence confirms, there is
nothing in the term "PUCKBOX" which, in the context of jewelry
Ser. No. 75/416,648
6
boxes and cases which are designed to look like a hockey puck,
is incongruous, ambiguous or susceptible to another plausible
meaning. No imagination, cogitation or mental gymnastics is
required in order for consumers to readily understand that the
term "PUCKBOX" designates a characteristic or feature integral
to the commercial appeal of applicant's novelty jewelry
containers, namely, that the boxes or cases look like a hockey
puck.
Accordingly, because the term "PUCKBOX" conveys
forthwith a significant feature or characteristic of applicant's
"jewelry cases and boxes not made of metal," such term is merely
descriptive thereof within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
G. D. Hohein
P. T. Hairston
H. R. Wendel
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board