Schroeder & Tremayne, Inc.

Trademark Trial and Appeal Board

May 24, 2013

No. 85157275 (T.T.A.B. May. 24, 2013)

Mailed:
May 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Schroeder & Tremayne, Inc.
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Serial No. 85157275
_______

Mark Sableman and Jennifer A. Visintine of Thompson Coburn
LLP for Schroeder & Tremayne, Inc.

Aretha C. Somerville, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Shaw and Adlin, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Schroeder & Tremayne, Inc. has appealed from the final
refusal of the trademark examining attorney to register THE
ORIGINAL and design, as shown below, for “cleaning mitts of
cloth and cleaning cloths; dish drying mats made of fabric
and foam; gloves for household purposes, namely, dish
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85157275
2
drying gloves” in Class 21, and “kitchen towels and dish
cloths,” in Class 24.1

The application has had a somewhat unusual history.
In the first Office action, the examining attorney required
a disclaimer of THE ORIGINAL, which applicant provided.
The application was then approved for publication, but was
never published. Instead, the examining attorney issued an
Office action refusing registration pursuant to Section
2(e)(1) of the Trademark Act, on the ground that the mark
is merely descriptive because the wording THE ORIGINAL
describes that applicant’s goods are the first of their
kind or not derivative of other goods. Noting that
applicant had disclaimed exclusive rights to these words,
the examining attorney explained that the stylization and
the design is not sufficiently striking, unique or
distinctive so as to create a commercial impression

1 Application Serial No. 85157275, filed October 20, 2010. The
application in Class 21 is based on Section 1(a) of the Trademark
Act, and asserts first use and first use in commerce at least as
early as August 31, 2009; the application in Class 24 is based on
Section 1(b) (intent-to-use).
Ser. No. 85157275
3
separate and apart from the unregistrable components of the
mark.
At that point, applicant proceeded in the alternative,
first arguing that its mark was inherently distinctive, and
that THE ORIGINAL was only suggestive as to the goods
identified in the application, and therefore did not need
to be disclaimed. However, applicant also agreed to
disclaim THE ORIGINAL if this was necessary to obtain a
registration on the Principal Register.
The examining attorney was not persuaded by
applicant’s arguments or evidence, and issued a final
Office action. This appeal followed.
We begin with a procedural point. With its appeal
brief applicant submitted a number of pages of evidence
that had not been previously made of record. The record in
the application should be complete prior to the filing of
an appeal, and the Board will ordinarily not consider
additional evidence filed with the Board after the appeal
is filed. See Trademark Rule 2.142(d). Although the
examining attorney has not specifically objected to
consideration of this evidence, neither did she discuss the
evidence in her brief. Therefore, we cannot deem her to
have stipulated it into the record. See TBMP § 1207.03
(Board may consider evidence submitted after appeal if the
Ser. No. 85157275
4
nonoffering party: 1) does not object to the new evidence,
and 2) discusses the new evidence or otherwise
affirmatively treats it as being of record). See also TBMP
§ 1203.02(e).
Applicant has also cited certain articles in its
brief, from internet websites such as
www.businessnewsdaily.com and http://blog.hubspot.com.
These articles were never made of record and neither the
quotes from them nor applicant’s assessment of the
statements in the articles have been given any
consideration.2
We now turn to the substantive issue on appeal,
whether the mark is merely descriptive. The examining
attorney argues that the mark is laudatorily descriptive
because it describes a quality of the goods.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). Laudatory marks

2 Even if the quotes and statements were considered, they would
have no effect on our decision.
Ser. No. 85157275
5
that describe the alleged merit of the goods or services
are considered to be descriptive because they simply
describe the characteristics or quality of the goods or
services in a condensed form. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 (TTAB 1998). 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 the 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; that a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Both applicant and the examining attorney have
submitted third-party registrations to support their
respective positions. Those submitted by applicant are for
marks containing or consisting of the word ORIGINAL, in
which there is no disclaimer of ORIGINAL nor resort to
Section 2(f), while the registrations submitted by the
examining attorney have disclaimers of this word. For
example, applicant relies on, inter alia, the following
registrations:
Ser. No. 85157275
6
for Himalayan crystal salt;3
for clothing;4 and
ORIGINAL SIX for, inter alia, action figures.5

The examining attorney relies on, inter alia, the following
registrations:

PPB THE ORIGNAL COLLECTIBLE, with THE ORIGINAL
COLLECTIBLE disclaimed,for, inter alia, bathroom
towels;6

with THE ORIGINAL MICORFIBER
TOWEL COMPANY SINCE 1990 disclaimed, for, inter
alia, towels; and

with THE ORIGINAL and BLANKET
disclaimed, for, inter alia, bed blankets.7

3 Reg. No. 3042424.
4 Reg. No. 1354253.
5 Reg. No. 2773891.
6 Reg. No. 3187421.
Ser. No. 85157275
7
Although some of the registrations submitted by
applicant can be distinguished because the word ORIGINIAL
appears as part of a unitary mark and therefore would not
be subject to a disclaimer, or the descriptive meaning of
the word is subsumed in the incongruous meaning of the mark
as a whole, the fact is that the various third-party
registrations do not reflect a consistent Office policy as
to when ORIGINAL is considered merely descriptive and when
it is not. Therefore, although the Office strives for
consistency, in this “battle of the registrations,” there
is little persuasive value in the registrations submitted
by either applicant or the examining attorney.8 See In re
Nett Designs Inc., 57 USPQ2d at 1566.
We therefore turn to the dictionary definitions and
precedent to determine whether THE ORIGINAL has a
laudatorily descriptive meaning.9

7 Reg. No. 3383147.
8 Nor do the third-party registrations for marks which applicant
contends have similar meanings to ORIGINAL, e.g., MODEL,
STANDARDS, PATTERN and NOVEL, have any real probative value,
because these terms and marks are different from ORIGINAL.
9 Applicant has cited to certain dictionary and thesaurus pages
in its brief where presumably definitions or synonyms of
“original” can be found. However, applicant never submitted the
definitions themselves, let alone copies of the relevant pages.
Although the Board may take judicial notice of dictionaries and
other reference works, see University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), in general,
when parties wish the Board to take judicial notice of
information, they supply a copy of the reference material that
they want the Board to consider. We point out that the
Ser. No. 85157275
8
The examining attorney has submitted several
definitions of “original” from Dictionary.com, including
“new; fresh; inventive; novel: an original way of
advertising.”10 We also note, from that same internet
source, the definition from Collins English Dictionary, 10th
ed. (2009), “the first and genuine form of something, from
which others are derived.”
We find, based on these definitions, that THE ORIGINAL
in applicant’s mark directly conveys the laudatory
information that applicant’s goods are new, fresh, novel or
the first and genuine form of the goods. We understand
applicant’s argument that it does not claim to be the
original maker of kitchen towels and dish cloths, which it
says “have certainly existed and been used for as long as
kitchens and woven goods have existed.” Brief, p. 6.
However, it is not necessary that purchasers perceive the
mark as describing the originator of the goods in general
for ORIGINAL to be found merely descriptive. ORIGINAL is a
term that also describes that a product has a new
characteristic. See General Foods Corp. v. Ralston Purina
Co., 220 USPQ 990, 933 (TTAB 1984), aff’d unpub’d, No. 84-

dictionary definitions we have considered, as discussed infra,
appear to generally include the “concepts of meaning” that
applicant argues in its brief.
10 www.dictionary.com, Dictionary.com Unabridged, based on the
Random House Dictionary, © 2013.

Ser. No. 85157275
9
1345 (Fed. Cir. Dec. 18, 1984), which found that ORIGINAL
BLEND was merely descriptive of cat food. Certainly there
would be no question that cat food products had been made
and sold prior to the applicant’s claimed use of the mark
in 1970. The Board stated that ORIGINAL is “generally used
to indicate that a product or a particular variety or style
of a product is the first-of-its kind,” and that “[t]here
is no doubt that one reason for its widespread use is that,
in the English language, at least, ORIGINAL has the
character of ‘puffery’… ” and that “if a manufacturer
wishes to say to purchasers in a plain and simple way that
the product, variety or type is the first-of-its kind,
there are not very many words other than ORIGINAL from
which to choose.” See also, In re Boston Beer Co. L.P.,
198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
Although the General Foods case discussed the
descriptiveness of the word ORIGINAL, there is nothing
about the addition of THE in the present mark that would
change the laudatory descriptive meaning of the mark for
the identified goods. The additional word THE merely
emphasizes that the goods are the first-of-their-kind.
Thus, we find that THE ORIGINAL is a laudatorily
descriptive term for the identified goods.
Ser. No. 85157275
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Applicant argues in the alternative that, even if THE
ORIGINAL is merely descriptive, the mark as a whole can be
registered with a disclaimer of THE ORIGINAL because it has
a distinctive stylization and design. Although an entire
mark cannot be disclaimed and also registered, where the
literal components of a mark are combined in a distinctive
design or display it is possible to disclaim those literal
components and still have a mark which is registrable as a
whole. In re Jackson Hole Ski Corp., 190 USPQ 175, 176
(TTAB 1976). The question, then, is whether, if applicant
disclaims exclusive rights to the term THE ORIGINAL, the
design element and the stylized script in which the words
are written are sufficient to create an impression separate
and apart from the impression made by the words themselves.
In re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB
1994).
As has been frequently recognized, whether or not the
disclaimed literal components of a designation sought to be
registered are displayed in an inherently distinctive
fashion is necessarily a subjective matter which must be
determined based on a viewer’s first impression. In re
Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986); In re
Jackson Hole Ski Corp., 190 USPQ at 176.
Ser. No. 85157275
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In In re Sadoru Group Ltd., 105 USPQ2d 1484 (TTAB
2012), the Board undertook an extensive analysis of the
cases involving stylized marks having potentially
descriptive or generic wording, so we see no need to depict
the marks here. The marks can be found at pages 1486
through 1488 of that opinion.
We find that the stylization and design elements of
applicant’s mark are not sufficient to create a separate
and inherently distinctive commercial impression apart from
the term itself. The background design for the words THE
ORIGINAL is an oval surrounded by a rectangle. Common
geometric shapes such as ovals, rectangles, circles,
triangles, diamonds and stars, when used as backgrounds for
the display of word or letter marks, are generally not
regarded as trademarks for the goods to which they are
applied absent evidence of distinctiveness of the design
alone. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB
1988). Even applicant has recognized that ovals are common
background shapes for trademarks. Reply brief, p. 4.
Further, the stylized script in which THE ORIGINAL appears
is a rather ordinary font, and the “tildes” on either side
of the words are not significant either. In short, the
background geometric shapes and the stylization of THE
Ser. No. 85157275
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ORIGINAL are not distinctive enough to create a separate
commercial impression.
Rather, in viewing applicant’s mark in the context of
the marks discussed in prior Board opinions, we consider
applicant’s mark to be far more similar to the marks in
which the stylization/design element was found not to
create an inherently distinctive display.
Accordingly, we find that applicant’s mark as a whole
is merely descriptive, and the design/stylization does not
create a separate and inherently distinctive commercial
impression apart from the term THE ORIGINAL, such that the
mark is registrable with a disclaimer of these words.
Decision: The refusal of registration is affirmed.