Stuller, Inc.

Trademark Trial and Appeal Board

May 6, 2004

No. 76374859 (T.T.A.B. May. 6, 2004)

Mailed: May 6, 2004
Paper No. 10
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Stuller, Inc.
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Serial No. 76374859
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R. Bennett Ford, Jr. of Roy, Kiesel, Keegan & DeNicola for
Stuller, Inc.
Katherine Stoides, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
____________
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Stuller, Inc. has filed an application to register on
the Principal Register the mark OCTET for “jewelry, namely
rings and gemstone settings,” in International Class 14.1
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark

1 Serial No. 76374859, filed February 25, 2002, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76374859
2
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive in connection with its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that OCTET is merely
descriptive in connection with the identified goods because
“it immediately communicates that the goods utilize settings
that have an octet, or ‘a group of eight’ prongs.” (Brief,
unnumbered p. 2.) In support of her position, the Examining
Attorney submitted a definition from The American Heritage
Dictionary of the English Language, 3rd ed., 1992, of
“octet” as “noun – … 2. a group of eight: ‘A train of heavy
wagons rumbled north on the Winnipeg Trail, drawn by octets
of oxen, the drovers walking alongside’ (Garrison
Keillor).”2 The Examining Attorney also referred to a
photograph submitted by applicant of the ring setting
intended to be identified by the mark herein (showing eight
prongs grouped in four pairs), and to applicant’s statement
that it “sells a wide variety of jewelry, including rings
with eight stones and settings with eight prongs[;]
[h]owever, this mark is intended for use with settings and

2 The dictionary definition of “octet” also includes the following
entries: “1. Music. a. A composition written for eight voices or eight
instruments. b. A group of eight singers or eight instrumentalists. … 3.
See octave. 4. A set of eight valence electrons in an atom or ion,
forming a stable configuration.”
Serial No. 76374859
3
rings utilizing settings that have four double prongs.”
(Response to Office Action, December 20, 2002, pp. 1-2 and
Exhibit B.)
Applicant contends that its identification of goods is
broadly worded and “no definition of OCTET is descriptive of
‘jewelry, namely rings and gemstones’” (Brief, p. 3); that
because its application is based on its intent to use the
mark, “[i]t is impossible to make this determination [that
the mark is merely descriptive] until an amendment to allege
use is made or a statement of use is filed” (Brief, p. 3);
and that the “mark connotes at least two additional meanings
beyond the general group of eight definition” (Brief, p. 5).
Applicant referred to two dictionary definitions of “octet”:
“Noun. 1. Music a. A composition for eight voices
or eight instruments. b. A group of eight singers
or eight instrumentalists.” [The American
Heritage Dictionary of the English Language, 4th
ed., 2000.]
“n. 1. A musical composition for eight parts. 2.
A group of eight musical performers. 3. Any
group of eight; esp., OCTAVE.” [The New
International Webster’s Concise Dictionary of the
English Language, 1997.]3 Therein, The Guide to
the Use of this Dictionary includes the following
entry: “7. Definition. In entries for words
having several senses, the order in which the
definitions appear is, wherever possible, that of
frequency of use, rather than semantic evolution.”
Applicant contends that OCTET is not merely descriptive
because the word connotes more than one meaning, noting that

3 This definition was submitted with applicant’s brief. However, we
take judicial notice thereof.
Serial No. 76374859
4
“[t]he ordering of these definitions is not insignificant[;]
Webster’s lists definitions according to their frequency of
use [and] [t]hus, when speakers of English use or see OCTET
it is usually in the musical poetic context rather than as a
general enumerator.”4 (Brief, p.5.) Applicant also states
that “[o]ne simply does not refer to a group of eight as an
octet in the same way that one refers to a group of two as a
pair.” (Brief, p. 6.) Applicant concludes that the mark
has several meanings, two of which have no connection with
applicant’s goods and, therefore, the mark is not merely
descriptive.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-

4 Applicant also discussed the etymology of “octet.” However, for
determining whether the relevant consumer would consider the mark merely
Serial No. 76374859
5
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
In this case applicant has admitted that it makes rings
with eight gemstones and settings with eight prongs; and
that the settings intended to be identified by the mark
herein will have eight prongs grouped as four pairs.
Regardless of the number of stones and prongs applicant
intends to use in rings and gemstone settings to be
identified by applicant’s proposed mark, OCTET, we know from
applicant’s own admission that at least some of these rings
will have eight gemstones and/or eight-pronged settings.
Applicant’s identification of goods is broadly worded so
that it encompasses rings with eight gemstones and settings
with eight prongs.5 Further, there is no question that one

descriptive of the identified goods, we find such a discussion
inapposite.
5 In view thereof, it is immaterial in this case that applicant has not
yet submitted an amendment to allege use/statement of use with
specimens. While it may not be possible in some cases to discern
whether a mark is merely descriptive in connection with the identified
goods or services without specimens or additional information, such is
not the case herein. Certainly, there is no per se rule, as applicant
suggests, against a mere descriptiveness refusal in an intent-to-use
application in which no specimens have been filed. See Eastman Kodak v.
Bell & Howell, 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993); and In re
Berman Bros. Harlen Furniture Inc., 26 USPQ2d 1514 (TTAB 1993).
Serial No. 76374859
6
of the meanings of “octet” is any group of eight things.
Thus, it is likely that the term OCTET will be perceived by
prospective purchasers as merely descriptive of the number
of gemstones or number of prongs in applicant’s ring or
setting. While “octet” has other meanings, particularly in
the music field, as noted supra, we must determine the
likely meaning of the term in relation to the goods
identified in the application. The mere fact that there are
other, unrelated meanings does not render the mark
registrable. Nor has applicant established that in relation
to the identified goods, both meanings of “octet” are
applicable and the effect will be that of a double entendre.
In conclusion, when applied to applicant’s goods, the
term OCTET immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s goods, namely the number of gemstones in a ring
or the number of prongs in a setting. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for purchasers of
and prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
OCTET as it pertains to applicant’s goods.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.

Serial No. 76374859
7