Sunset Publishing Co.

Trademark Trial and Appeal Board

Jul 31, 1997

EX (T.T.A.B. Jul. 31, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JULY 31, 97
Paper No. 10
EWH/HLJ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sunset Publishing Corporation
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Serial No. 74/602,744
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Robert T. Scherer of Time Warner Inc. for Sunset Publishing
Corporation.
Meryl L. Hershkowitz, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney).
_______
Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Sunset Publishing Corporation (applicant) seeks
registration of SUNSET CREATIVE COOKING LIBRARY for "a
series of recipe books." The application was filed on
November 23, 1994 with a claimed first use date of October
1994. The application contained no disclaimer.
In the first office action, the examining attorney
stated that "the applicant must disclaim the descriptive
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2
wording CREATIVE COOKING LIBRARY part from the mark as
shown. Trademark Act Section 6." Attached to this office
action were excerpts of stories from the NEXIS database
wherein the term "creative cooking" appeared. The examining
attorney also pointed out that one defination of the word
"library" is "a series of related books issued by a
publisher," citing Webster's Ninth New Collegiate Dictionary
(1992).
In response, applicant offered to disclaim "the words
COOKING and LIBRARY apart from the mark as shown." However,
applicant refused to disclaim the word CREATIVE. Applicant
contended "that the word CREATIVE is -- at most --
suggestive of its goods and therefore is registrable on the
Principal Register, without disclaimer, since consumers
receive no definite information, but only a vague
suggestion, about applicants goods from the term CREATIVE."
Moreover, applicant included a list of marks registered with
the United States Patent and Trademark Office which
contained the word CREATIVE, but which did not have a
disclaimer of said word.
In the second office action, the examining attorney
stated she did not agree with applicant that as applied to
applicant's goods, the term CREATIVE was suggestive and
not merely descriptive. As for the list of third-party
registrations, the examining attorney did not object to the
fact that applicant submitted but a mere list, instead of
actual copies of said registrations. Rather, the examining
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3
attorney argued the merits of this list, noting that none of
the over 80 registrations "used ‘creative’ in conjunction
with ‘cooking’...[and that] third-party registrations are
not conclusive on the question of descriptiveness."
In response to this second office action, applicant
maintained its view that the term CREATIVE in its mark was
not merely descriptive, but rather was simply suggestive of
its goods. However, applicant also offered an alternative
course to avoid "further delay" and "appeal to the TTAB" by
providing the following disclaimer: "No claim is made to
the exclusive right to use the separate words CREATIVE,
COOKING and LIBRARY apart from the mark as shown."
In the third and final office action, the examining
attorney stated that "applicant's amendment disclaiming
CREATIVE, COOKING and LIBRARY separately is unacceptable."
The examining attorney concluded by stating "that the
requirement that applicant disclaim CREATIVE COOKING LIBRARY
apart from the mark as shown is [made] final."
Subsequently, applicant appealed to this Board.
Applicant and the examining attorney filed briefs.
Applicant did not request a hearing.
A review of the NEXIS Excerpts attached to office
actions nos. 1 and 2 reveals that the term "creative
cooking" has no specfic meaning, unlike such terms as
"Italian cooking," "microwave cooking" or "French cooking."
Moreover, a review of the list of third-party registrations
of marks containing the word CREATIVE where said word was
Ser No. 74/602744
4
not disclaimed further supports the conclusion that this
word is somewhat ambiguous. In order for a term to be held
descriptive and subject to disclaimer, the term must convey
an immediate idea about the ingredients, qualities or
characteristic of applicant's goods or services with a
"degree of particularity." In re TMS Corp. of the Americas,
200 USPQ 57, 59 (TTAB 1978); In re Entenmann's Inc., 15
USPQ2d 1750, 1751 (TTAB 1990), aff'd 90-1495 (Fed. Cir.
February 13, 1991). Because the term CREATIVE in
applicant's mark simply fails to convey information about
applicant's goods with the required "degree of
particularity," we find that this term is not descriptive of
applicant's good and hence need not be disclaimed.
Nevertheless, we are "affirming" the refusal to
register because applicant's inital disclaimer reads as
follows: "No claim is made to the exclusive right to use
the words COOKING and LIBRARY apart from the mark as shown."
The phrase COOKING LIBRARY is unitary in nature, and thus
the entire phrase must be disclaimed. See In re Wanstrath,
7 USPQ2d 1412, 1413 (Comm'r Pats. 1987).
Decision: The refusal to register is "affirmed."
However, applicant is allowed thirty days from the mailing
date of this decision to submit an appropriate disclaimer,
which should read as follows: "No claim is made to
exclusive right to use COOKING LIBRARY apart from the mark
as shown." Upon the receipt of this appropriate disclaimer,
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this decision will be set aside and applicant's will be
passed to publication. See In re Interco Inc., 29 USPQ2d
2037, 2039 (TTAB 1993).
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board