Stencil Ease, Inc.

Trademark Trial and Appeal Board

Nov 24, 1998

No. 74519518 (T.T.A.B. Nov. 24, 1998)

Paper No. 15
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Stencil Ease, Inc.
________
Serial No. 74/519,518
_______
Robert H. Montgomery for applicant.
Caryn L. Hines, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Stencil Ease, Inc. to
register the mark SPILL PROOF for “creamy solid stencil
paint for interior use.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground

1 Application Serial No. 74/519,518, filed May 3, 1994, alleging
dates of first use of May 31, 1992.
Ser No. 74/519,518
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that applicant’s mark, when applied to applicant’s goods,
is merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.2
The essence of the Examining Attorney’s refusal is
summed up in her own words (brief, p. 4):
The proposed mark is a widely used term
to describe an attribute of liquids and
the containers of these liquids. See
the Lexis/Nexis attachments to the
Office action mailed September 10,
1996. The proposed mark, “SPILL
PROOF[,]” describes a feature of the
container for the paint and this
feature is that the containers enable
the paint to be poured without spills.
The applicant argues that the proposed
mark is not descriptive, however, the
applicant had something in mind when it
chose its trademark. And further
“spill proof” does has [sic] a meaning
as applied to a feature of the goods.
It is important to note that the
applicant has not stated otherwise nor
has it stated what it meant by naming
the goods “SPILL PROOF.” The wording
“spill proof” as applied to the paint
does not have meaning in that fluid or
liquid paint cannot be manufactured to
be “spill proof,” but its containers
can be made as such. Clearly, the
wording “spill proof” has a definite
meaning as applied to the containers
for the paint which are inseparable

2 The final refusal appears also to raise the issue of
genericness for the first time. Although the Examining Attorney,
in her brief, devoted about one page to a genericness argument,
she went on to conclude, quite properly, that “the only issue now
on appeal is whether the mark is merely descriptive, not generic”
and that the Board need not decide the issue of genericness.
Ser No. 74/519,518
3
from the goods in that paint cannot be
sold without a vessel of some
type....Although fluids cannot be made
“spill proof,” the vessels in which
they are contained can be....Containers
of paint that are “spill proof” can be
desirous and create an incentive to
purchase the goods.
In support of her position, the Examining Attorney
submitted the aforementioned excerpts retrieved from the
NEXIS database, as well as copies of third-party
registrations wherein the term “spill proof” appears in the
identification of goods (as, for example, “spill-proof
cup”).
Applicant, in urging that the refusal be reversed,
begins by pointing out that the mere descriptiveness
refusal was not raised until the third Office action.
Applicant contends that the Examining Attorney’s reasoning
is “total conjecture, very obtuse and not based on fact.”
Applicant essentially argues that its application covers
paint, not containers, and that, therefore, the mark has
not been shown to be merely descriptive. In making its
arguments, applicant points to the Office’s issuance of a
third-party registration of the mark SPIL-PRUF for resinous
coatings.
A mark is descriptive if it "forthwith conveys an
immediate idea of the ingredients, qualities or
Ser No. 74/519,518
4
characteristics of the goods." Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd
Cir. 1976) (emphasis added). See also: In re Abcor
Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978).
Moreover, in order to be descriptive, the mark must
immediately convey information as to the ingredients,
qualities or characteristics of the goods with a "degree of
particularity." Plus Products v. Medical Modalities
Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981);
Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949,
952 (TTAB 1981); In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); and In re Diet Tabs, Inc., 231 USPQ
587, 588 (TTAB 1986).
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods.
In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). We must
reverse in this case due to the wholly inadequate record
upon which the refusal to register is based.
So as to be clear on one point at the outset, the
Examining Attorney does not contend that the mark is merely
descriptive of applicant’s paint, but rather contends that
the mark describes the container in which the paint is
sold. Relative to this point, the Examining Attorney
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opined, as noted earlier, that “[t]he wording ‘spill proof’
as applied to the paint does not have meaning in that fluid
or liquid paint cannot be manufactured to be ‘spill proof,’
but its containers can be made as such.” (brief, p.
4)(emphasis added)3
We thus focus our attention on the Examining
Attorney’s contention that the term SPILL PROOF merely
describes a feature of the container for applicant’s
product. This contention is based, unfortunately, on
assumptions that have no factual basis. The NEXIS evidence
refers to containers such as coffee mugs, bottles and
bowls, and the third-party registrations are for the
containers per se. In only a few instances are there any
references to liquids being sold in a “spill proof”
container (a bottle of fragrance for children, a bottle of
nail polish, a bottle of a children’s beverage and “toys,
namely spill-proof, self contained bottles containing

3 We have questions about the Examining Attorney’s view inasmuch
as she seems to ignore the fact that the identification of goods
reads “creamy solid stencil paint for interior use.” This might
lead one to conclude that the goods, not in truly liquid form,
are not capable of being spilled or dripped, that is, that the
paint is “spill proof.” Nonetheless, the Examining Attorney
never argued as such, but rather consistently maintained that the
mark cannot be descriptive of the paint itself. Accordingly, and
since the record is devoid of any evidence whatsoever bearing on
applicant’s paint or similar products, the Board has no factual
basis upon which to find that SPILL PROOF is merely descriptive
of stencil paint which cannot be spilled.
Ser No. 74/519,518
6
paint”). Conspicuously absent in the record is any
evidence that the term “spill proof” has been used to refer
to a product and/or product container of the specific type
of applicant’s. See: In re Stroh Brewery Co., 34 USPQ2d
1796, 1797 (TTAB 1995)[the fact that a term may be
descriptive of certain goods is not determinative of
whether it is descriptive of other goods, even if the goods
are closely related]. Even when considering the paint
product and container as an integral unit for sale, as the
Examining Attorney has done, there simply is no evidence
that applicant’s container is “spill proof” or that the
term has been used to describe similar goods. Based on the
sparse record, we are unable to conclude that purchasers,
upon seeing the mark on applicant’s product, would
immediately understand the mark as describing a significant
feature of the product, namely, that the product is sold in
a container which prevents spillage. Simply put, the
Examining Attorney has failed to establish, with probative
evidence, that the mark is merely descriptive when applied
to applicant’s goods.
In deciding this issue, we have given little weight to
the Office’s issuance of a Principal Register registration
to a third party for the mark SPIL-PRUF for “coating
materials, namely, synthetic resinous coatings for
Ser No. 74/519,518
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application to wood, cloth, paper and metal.” Suffice it
to say that each case must be decided on its own set of
facts.
We would be remiss if we did not offer one final
thought. We are at a loss to understand why, in cases
where a refusal is made under Section 2(e)(1) (especially
involving use-based applications as is the situation here),
the Office does not, as a matter of course, request product
information from the applicant. See: Trademark Manual of
Examining Procedure, § 1105.02. Such information often is
very helpful in resolving the often close call between
suggestive and merely descriptive marks. The specimens in
the present application do not shed light on the issue
before us, but if product literature were of record here,
the Examining Attorney might well have had the benefit of
certain facts regarding applicant’s paint and/or containers
therefor, as opposed to having been confined to mere
speculation.
This is a classic case where the Board’s decision is
driven by a record which is, quite frankly, lacking. The
clear shortcomings of the record, at the very least, create
doubts on the issue of whether the mark is merely
descriptive as applied to the goods. In this situation,
the Board must resolve doubts in applicant’s favor with the
Ser No. 74/519,518
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knowledge that any third party is free to file an
opposition and develop a more comprehensive record. In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972). In the
present case, it is quite possible that on a fully
developed record, a different result may be reached.
Decision: The refusal to register is reversed.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
And Appeal Board
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