Solar Protective Factory, Inc.

Trademark Trial and Appeal Board

Mar 30, 2001

No. 75592344 (T.T.A.B. Mar. 30, 2001)

03/30/01
Paper No. 9
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Solar Protective Factory, Inc.
________
Serial No. 75/592,344
_______
Leon I. Edelson for applicant.
Idi Aisha Clarke, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Quinn, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Solar Protective Factory,
Inc. to register the mark SPF for “chemical additive used
in the manufacture of textile products.”1
The Trademark Examining Attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, when applied to applicant’s goods,
1 Application Serial No. 75/592,344, filed November 19, 1998,
based on an allegation of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/592,344
2
is merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.2 An oral
hearing was not requested.
The Examining Attorney maintains that the mark is
merely descriptive of a chemical additive that has a
measurable SPF or “sun protection factor,” or of a chemical
additive used to give a sun protection factor to fabric for
clothing. The Examining Attorney submitted a dictionary
listing of “SPF,” and excerpts of articles retrieved from
the NEXIS database.3
Applicant confirms that its chemical additive is used
on fabric during the dyeing of the fabric, and that
purchasers of the additive are manufacturers of the dyed
fabric. Applicant goes on to assert that these purchasers
are discriminating purchasers with exceptional training and
education. Applicant further contends that the meaning of
SPF with respect to unrelated products, namely, suntanning
lotions and cremes, renders its mark just suggestive as
applied to applicant’s chemical additive. Applicant also
2 The Examining Attorney, with her appeal brief, furnished
excerpts from applicant’s Website retrieved from the Internet.
The submission is untimely, and this evidence has not been
considered in making our decision. Trademark Rule 2.142(d).
3 Applicant has properly criticized those articles appearing in
foreign publications, and we have not considered them. In re
Urbano, 51 USPQ2d 1776, 1778 at n. 3 (TTAB 1999).
Ser No. 75/592,344
3
points out that the letters SPF also refer to applicant’s
name, “Solar Protective Factory, Inc.” Applicant claims
that it is diligent in policing its mark and takes
corrective action when deemed appropriate. In this
connection, applicant furnished three letters it wrote to
publishers concerning their descriptive misuse of
applicant’s mark. In support of its urging that the
refusal be reversed, applicant submitted a dictionary
listing of “SPF.” Applicant also claims ownership of
Registration No. 1,770,817, issued May 11, 1993 on the
Principal Register (Section 8 affidavit filed), of the mark
SPF for various items of clothing.
It is well settled that a term is considered to be
merely descriptive of goods, 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. 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 in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
feature about them. Moreover, whether a term is merely
Ser No. 75/592,344
4
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The dictionary listings establish that “SPF” is an
abbreviation of “sun protection factor,” a classification
of the U.S. Food and Drug Administration which measures the
effectiveness of suntanning preparations in protecting the
skin from the harmful effects of the sun’s ultraviolet
radiation. Further, the NEXIS evidence of record
demonstrates that the commonly recognized and understood
meaning of “SPF” as “sun protection factor” also has been
adopted for use in the clothing industry. The following
excerpts are representative:
While everyone can benefit from clothes
and sunscreen of an SPF, or sun
protection factor, of at least 15 on
all exposed areas, some people need to
be particularly cautious...Solar
Protective Factory [applicant] of
Sacramento, Calif. makes a sun-
protection fabric called Solarweave,
which is licensed to clothing
manufacturers in this country and
abroad...Solarweave is a tightly woven
nylon with the feel of a soft cotton.
The company’s chief executive, Harvey
E. Schakowsky, says a chemical
treatment added during the dyeing
increases the fabric’s sun-blocking
ability.
The Houston Chronicle, June 27, 1996
Clothing that is labeled or promoted as
providing protection against the sun or
Ser No. 75/592,344
5
limiting exposure to UV rays is
considered a medical device and is
regulated by FDA. Sun Precautions,
Inc., of Seattle, Wash., has received
FDA clearance to market its Solumbra
clothing for sun protection and is
allowed to claim an SPF of 30 for its
products.
U.S. Food and Drug Administration
Website, February 22, 2000
Cover up. When you’ve had enough sun,
protect yourself with clothing. Long-
sleeved shirts or beach wraps are fine
but offer an SPF of just 9. Look for
special lightweight shirts, pants,
jackets and hats made of a patented
fabric with an SPF of 30. “This
clothing is best for people who are at
high risk of skin cancer or for those
who need to be outdoors all the time,”
says Bank.
Vegetarian Times, June 1, 1999
For those who like to get out in the
sun, but can’t because of previous skin
cancers, sun-protective clothing is now
available. One brand is Solumbra.
According to its pamphlet, a company
called Sun Precautions in Everett,
Wash. makes SPF 30-rated clothes for
head-to-toe protection.
Vero Beach Press Journal, May 25, 1999
Or you might try clothing that protects
against ultraviolet rays. Seattle-
based Sun Precautions has created a
line of clothing with a 30+ SPF.
St. Louis Post-Dispatch, May 22, 1999
This shirt protects against the sun’s
ultraviolet (UVA and UVB) rays that
penetrate normal clothing. An extra
bonus: the 30 SPF protection is woven
into the material.
Natural Health, March 1999
Ser No. 75/592,344
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Protect yourself from the dangerous
rays of the sun with a complete line of
30+ SPF clothing.
Dermatology Times, February 1999
Now you can buy protective clothing
that is specifically designed with high
SPFs for the outdoors.
Women’s Sports and Fitness, June 1998
But it doesn’t really matter what kind
of sun protection you’re using--SPF
clothing or high SPF sunscreen...
Newsday, May 26, 1994
Perhaps you’ve seen the catalogs
offering garments made with special
sunblocking fabric, being sold as a
complement to sunscreen...These fabrics
are made mainly of nylon, woven very
tightly to stop light. Solarweave
fibers [sold by applicant] also have a
coating that is supposed to absorb
ultra-violet light...Both special
fabrics indeed yielded an SPF exceeding
30.
Consumer Reports, May 1998
We agree with the Examining Attorney’s assessment of
the mere descriptiveness of the mark SPF as applied to a
chemical additive used in the manufacture of textile
products. The abbreviation SPF immediately describes,
without conjecture or speculation, a significant
characteristic, function or purpose of applicant’s product,
namely, that the chemical additive is used to give a sun
protection factor to clothing fabric. To the sophisticated
and technically knowledgeable purchasers and users of
applicant’s chemical additive, that is, textile
Ser No. 75/592,344
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manufacturers, who no doubt would be familiar with the
trade’s emerging use of the abbreviation “SPF” in
connection with clothing designed to protect the wearer’s
skin against the harmful effects of the sun’s radiation, no
imagination would be necessary in order for such persons to
perceive precisely the merely descriptive significance of
the abbreviation as it relates to an important (if not the
most important) characteristic of the chemical additive.
The fact that the letters may also act as an
abbreviation of applicant’s trade name hardly detracts from
the mere descriptiveness of the letters “SPF” when used in
connection with applicant’s chemical additive. See: In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505
(CCPA 1980)[QUIK-PRINT is merely descriptive of “same day”
printing and photocopying services]; and Nationwide
Consumer Testing Institute, Inc. v. Consumer Testing
Laboratories, Inc., 159 USPQ 304 (TTAB 1968)[CONSUMER
TESTING LABORATORIES is merely descriptive of services of
conducting various tests and analysis on fibers and
fabrics].
Applicant’s ownership of a registration of SPF on the
Principal Register also does not compel a different result
herein. While uniform treatment under the Trademark Act is
an administrative goal, our task in this appeal is to
Ser No. 75/592,344
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determine, based on the record before us, whether
applicant’s mark is merely descriptive. As often noted by
the Board, each case must be decided on its own merits. We
are not privy to the record in the file of applicant’s
prior registration and, moreover, the determination of
registrability of that particular mark by the Trademark
Examining Groups cannot control the result in the case now
before us. See: In re Nett Designs Inc., ___F.3d___, 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.”].
Decision: The refusal to register is affirmed.
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