The Ipe Clip Fastener Company, LLC

Trademark Trial and Appeal Board

Sep 22, 2015

No. 85798512 (T.T.A.B. Sep. 22, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Ipe Clip Fastener Company, LLC
_____

Serial No. 85798512
_____

J. Todd Timmerman and Mindi M. Richter of Shumaker, Loop & Kendrick, LLP,
for The Ipe Clip Fastener Company, LLC.
David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Bucher, Kuczma and Greenbaum,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
The Ipe Clip Fastener Company, LLC (“Applicant”) seeks registration on the
Principal Register of the mark HARDWOOD WRENCH (in standard characters)
for:
hand tools, namely, hand-operated tools in the nature of a
handle and clamp for use in bending boards, panels, and
planks and installing decking, flooring, and siding in
International Class 8.1

1 Application Serial No. 85798512 was filed on December 10, 2012, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as April 30, 2009.
Applicant claims ownership of U.S. Registration Nos. 3714544 and 3756349.
Serial No. 85798512
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e), on the
ground that the proposed mark merely describes a purpose or function of
Applicant’s goods.
When the refusal was made final, Applicant filed a Notice of Appeal and
requested reconsideration, including submission of a claim of acquired
distinctiveness in the alternative. After the Examining Attorney denied the
requests for reconsideration filed by Applicant, the appeal was resumed. Applicant
and the Examining Attorney have filed briefs.
I. Descriptiveness
A term is merely descriptive within the meaning of § 2(e)(1) if it immediately
conveys knowledge of a quality, characteristic, function, feature, purpose or use of
the goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987). Whether a particular term is merely
descriptive must be determined not in the abstract, but in relation to the goods for
which registration is sought, the context in which the term is used, and the possible
significance that the term is likely to have to the average prospective purchaser
encountering the goods in the marketplace. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d
1822, 1823 (TTAB 2012).
Serial No. 85798512
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The Examining Attorney has refused registration on the ground that the
components of the applied-for HARDWOOD WRENCH mark are descriptive and
retain their descriptive meanings when combined such that the overall composite
mark is descriptive. In support of this position, the Examining Attorney provided
the following definitions:
“hardwood”: 1. The wood of a dicotyledonous tree.
The American Heritage Dictionary.2

“wrench”: 6. Any of various hand or power tools, often having fixed or
adjustable jaws, used for gripping, turning, or twisting objects such as
nuts, bolts, or pipes.”
The American Heritage Dictionary.3

The Examining Attorney contends that based on the plain meaning of the word
“wrench,” and as shown in the exhibits, wrenches come in many shapes and sizes
for a variety of purposes including tools that use a fulcrum point and a lever to
apply pressure for a variety of fastening, twisting, bending, or prying applications.4
The Examining Attorney also noted Registration No.
3714544 owned by Applicant, for the special form mark
shown herein where the term “Hardwood Wrench” is
disclaimed and the description of goods covered by the Registration reads “Hand
tools, namely, wrenches in the nature of a hand-operated deck tool consisting of a
clamp with a handle for use in bending boards and installing tongue and groove

2 http://education.yahoo.com/reference/dictionary/entry/hardwood, 3/30/2013, attached
as Exhibit A to April 1, 2013 Office Action, TSDR pp. 5-7.
3 http://education.yahoo.com/reference/dictionary/entry/wrench, 3/30/2013, attached as
Exhibit B to April 1, 2013 Office Action, TSDR pp. 8-10.
4 May 22, 2013 Final Office Action, TSDR p. 3 of 33; Exhibit B TSDR pp. 9-21.
Serial No. 85798512
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flooring” (emphasis added). Unlike this prior Registration, where Applicant’s goods
are identified as “wrenches,” its identification of goods as set out in the present
application does not include the prefatory label of “wrenches,” describing the goods
merely as “hand-operated tools in the nature of a handle and clamp for use in
bending boards, panels, and planks and installing decking, flooring, and siding.”
Despite this minor difference in the identifications of the goods, based upon the
dictionary definition of “wrench” the Examining Attorney argues that Applicant’s
goods as described in its application are indeed wrenches, used for manipulating
hardwood materials.5
Applicant contends that a “hand-operated tool in the nature of a handle and
clamp for use in bending boards, panels, and planks and installing decking, flooring,
and siding” is not a “wrench.” According to Applicant, the term “wrench” is defined
as:
A hand or power tool for holding, twisting, or turning an object (as a
bolt or nut).
Merriam Webster Dictionary.6
A tool used for gripping and turning nuts, bolts, pipes, etc.
Oxford Dictionary.7
A tool with a round end that fits around a nut of a particular size.
Macmillan Dictionary.8

5 April 1, 2013 Office Action, TSDR p. 3 of 16.
6 See attachment from http://www.merriam-webster.com/dictionary/wrench to Response
to April 1, 2013 Office Action, TSDR p. 12 of 30.
7 See attachment from http://oxforddictionaries.com/us/definition/american_english
/wrench to Response to April 1, 2013 Office Action, TSDR p. 16 of 30.
8 See attachment from http://www.macmillandictionary.com/us/dictionary/american/
wrench to Response to April 1, 2013 Office Action, TSDR p. 19 of 30.
Serial No. 85798512
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Any of various hand or power tools, often having fixed or adjustable
jaws, used for gripping, turning, or twisting objects such as nuts, bolts,
or pipes.
Free Online Dictionary.9
Applicant thus concludes that the term “wrench” refers to a tool that is used to grip
and then rotate an object such as a nut, bolt, or pipe, and has no reference or
relation to wood or wooden goods. According to Applicant, “its goods are hand tools
used in connection with boards, panels, or planks in decking, flooring, and siding
applications, which connect to, for example, a floor or ceiling joist or wall stud
wherein the tool is used to bend the board, panel, or plank back and forth in order
to straighten and align the same. The tool works by applying pressure to the edges
of the board, panel, or plank and bend the same back and forth as it is fastened to a
floor or ceiling joist or wall stud; it does not twist, turn or rotate anything, as would
a ‘wrench.’ Rather it bends things through the application of leverage and force,
specifically boards, panels, and planks.”10
Although its goods are not wrenches according to Applicant, it recognizes that
the term WRENCH in its mark suggests to consumers that the product is some sort
of hand tool, admitting that the appearance of the HARDWOOD WRENCH tool is
reminiscent of a wrench, with its handle and larger head, yet it maintains that the
tool is not a wrench or used in the manner of a wrench. According to Applicant, the
tool is not used to twist, turn, rotate, tighten, or loosen nuts, bolts, pipes, or for that
matter anything made of wood, nor is the product itself made of wood. Rather, it is

9 See attachment from http://www.thefreedictionary.com/wrench to Response to April 1,
2013 Office Action, TSDR p. 21 of 30.
10 Response to April 1, 2013 Office Action, TSDR p. 2 of 30.
Serial No. 85798512
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used to bend, straighten, and align boards, planks, and panels.11 Thus, Applicant
contends its HARDWOOD WRENCH mark does not directly describe the actual
nature of the goods for which registration is sought and its mark cannot be
considered descriptive.
Applicant maintains that although it is acceptable to separately view the
component parts of a mark as a preliminary step on the way to an ultimate
determination of probable customer reaction to the composite as a whole, the final
required step is to determine whether the mark as a whole, i.e., the combination of
the individual parts, conveys a distinctive source-identifying impression contrary to
any potential descriptiveness of the individual parts. In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)).12
The Examining Attorney considers the descriptive meaning of each part of the
mark and concludes that the mark as a whole is merely descriptive. Applicant
disagrees and contends when the terms HARDWOOD and WRENCH are considered
in the composite form HARDWOOD WRENCH, it is clear the mark is not
descriptive as a wrench is generally used for adjusting metal objects, not wood;
additionally, the customer would not consider a wrench to be made of wood. As
such, Applicant maintains that the terms HARDWOOD and WRENCH have no
discernible or obvious relation to one another or direct meaning for the applied for
goods. Taken together, Applicant argues they have sufficient distinctive character

11 Response to April 1, 2013 Office Action, TSDR p. 2 of 30.
12 Response to April 1, 2013 Office Action, TSDR p. 3 of 30.
Serial No. 85798512
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when considered in respect of such goods to serve the purpose of a trademark in
distinguishing the goods of Applicant from those of others.13
As to the definition of the term “wrench,” Applicant suggests what it believes
would be an ordinary consumer’s everyday understanding of what is and is not a
“wrench,” while the Examining Attorney asserts a broader definition. Applicant
admits that the design of its product is reminiscent of what one would generally
consider a wrench to be, but contends that it is not exactly what the ordinary
consumer would immediately understand a wrench to be.14 The definitions relied on
by both Applicant and the Trademark Examining Attorney relate to a tool having
generally similar functions. Thus, we find that consumers would understand that
the applied-for mark describes the purpose and/or a feature of the goods, namely,
that they are a wrench-like device used for manipulating hardwood materials.
Applicant also argues that the HARDWOOD WRENCH mark is a unique
composite of two incongruous terms. Relying on its dictionary definitions, Applicant
argues that wrenches are generally used to twist, turn, rotate, tighten, or loosen
things such as nuts, bolts, and pipes, items not generally composed of wood. And,
Applicant says, it is common knowledge that wrenches are generally made of metal,
not wood. Therefore, Applicant argues the combination of the terms HARDWOOD
and WRENCH is unusual, and would force a customer to use imagination to arrive
at the nature and application of the goods upon seeing the HARDWOOD WRENCH
mark. However, Applicant’s “How-To” section of its website states that one of the

13 Response to April 1, 2013 Office Action, TSDR p. 3 of 30.
14 November 3, 2013 Request for Reconsideration After Final Action, TSDR p. 2 of 53.
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“Product Benefits” of the HARDWOOD WRENCH is that it has a “[h]igh quality
anodized aircraft grade aluminum with hardwood handle.” (emphasis added).15
Thus, “hardwood” describes multiple aspects of the goods, including what the
handle is made of and the types of flooring on which the device is best used.
Combinations of merely descriptive terms are registrable if their combination
results in a new and different commercial impression and/or the term created
imparts a unique, incongruous or otherwise non-descriptive separate meaning as
used in connection with the goods. In re Colonial Stores, Inc., 394 F.2d 549, 157
USPQ 382, 384 (CCPA 1968); In re Positec Group Ltd., 108 USPQ2d 1161, 1162-63
(TTAB 2013). Generally, if each component retains its descriptive significance in
relation to the goods, as we find to be the case with respect to Applicant’s applied-
for mark, the combination results in a composite that is itself descriptive. See
DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for
medical devices); also see, In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341
(TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re
King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (THE BREATHABLE
MATTRESS held merely descriptive of beds, mattresses, box springs, and pillows
where BREATHABLE retained its ordinary dictionary meaning when combined
with MATTRESS and the resulting combination was used descriptively in the
relevant industry); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB

15 See http://www.hardwoodwrench.com?x=how-to attached to May 1, 2013 Response to
Office Action, TSDR p. 27 of 30; http://hardwoodwrench.com/?x=home attached to May 22,
2013 Office Action, TSDR p. 7 of 33.
Serial No. 85798512
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1988) (GROUP SALES BOX OFFICE is merely descriptive of theater ticket sales
services because it combines the two common descriptive terms most applicable to
applicant’s services which remains a common descriptive compound expression).
When used in combination, the terms HARDWOOD and WRENCH do not evoke
any new or unique commercial impressions. Because the terms retain their merely
descriptive significance in relation to the goods, we find that the combination
results in a composite that is itself merely descriptive. See In re Phoseon
Technology, 103 USPQ2d at 1823. A term need not immediately convey an idea of
each and every specific feature of an applicant’s goods or services in order to be
considered merely descriptive; it is enough that the term describes one significant
attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216
USPQ 358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973).
Applicant argues that the absence of evidence of descriptive usage of
HARDWOOD WRENCH by others constitutes strong evidence that the applied-for
mark is not descriptive.16 However, it is well established that simply because an
applicant may have been the first or only user of a merely descriptive designation
does not necessarily render it incongruous or distinctive if the only significance
conveyed by the term is merely descriptive, as is the case here. See In re Phoseon
Technology, 103 USPQ2d at 1826; In re Hunter Fan Co., 78 USPQ2d 1474, 1476
(TTAB 2006).

16 App. Brf. p. 11 (7 TTABVUE 16).
Serial No. 85798512
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In its Registration for its word and design mark, , Applicant’s
product is identified as a “wrench.”17 Additionally, other competitors also use the
term “wrench” in the name of their products which are similar to those identified in
the instant application, namely BOWRENCH®18 (registered for “hand-operated
deck tool in the nature of a handle and clamp for use in bending boards and
installing tongue and groove flooring”) and COBRA WRENCH (a “wood board
straightening tool”).19 Thus, Applicant, as well as two other companies, use the term
“wrench” in the names of their products. That there are various descriptive phrases
used to describe the products, does not detract from the descriptiveness of “wrench”
for these types of products.
As to the alleged incongruity of the applied-for mark urged by Applicant,
Applicant does not explain the incongruity and we see none. The applied-for mark
combines the merely descriptive term HARDWOOD with the merely descriptive
term WRENCH. This combination of terms simply informs that Applicant’s goods

17 April 1, 2013 Office Action, TSDR pp. 12-14 of 16.
18 Applicant’s note of the fact that the registrant of the BOWRENCH registration (Exhibit
D to May 22, 2013 Final Office Action, TSDR p. 31 of 33) was not required to disclaim the
term “wrench” apart from the BOWRENCH mark as a whole, nor was the mark deemed
either descriptive or misdescriptive, is without significance. App. Brf. p. 11 (7 TTABVUE
16). When a descriptive term is incorporated as part of a compound word mark with a
registerable component, no disclaimer of the unregistrable component of the compound
word will be required. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB
1981) (finding that “[a] disclaimer of a descriptive portion of a composite mark is
unnecessary . . . if the elements are so merged together that they cannot be regarded as
separable elements . . . for example, . . . by combining two words or terms, one of which
would be unregistrable by itself . . .”); Trademark Manual of Examining Procedure (TMEP)
§ 1213.05(a) (July 2015).
19 Exhibit C to May 22, 2013 Final Office Action, TSDR pp. 22-29 of 33.
Serial No. 85798512
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are made from wood and/or are hand tools used for working with wood. Thus, no
imagination, thought or perception is needed to understand the nature of the
identified goods. Looking at the mark as a whole, we do not see a meaning of the
term HARDWOOD WRENCH separate from the meaning of its two parts. The fact
that there is no evidence in the record of any use of the term HARDWOOD
WRENCH other than as a designation adopted for use in connection with
Applicant’s product does not change the outcome.
Applicant notes that when deciding the issue of descriptiveness, it is the Board’s
policy to resolve doubts in favor of the applicant and allow the mark to be published.
See In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).20 Here, however, there is no
such doubt about the descriptiveness of the applied-for mark.
II. Whether HARDWOOD WRENCH has Acquired Distinctiveness
Section 2(f) permits registration of marks that, despite not qualifying for
registration in light of Section 2(e), have nevertheless “become distinctive of the
applicant’s goods in commerce.” Thus, “Section 2(f) is not a provision on which
registration can be refused,” Yamaha International Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988); In re Capital Formation
Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983), but is a provision under
which an applicant has a chance to prove that it is entitled to a federal trademark
registration which would otherwise be refused. To establish acquired

20 Applicant’s Appeal Brief at p. 6 (7 TTABVUE 7).
Serial No. 85798512
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distinctiveness, an applicant must show that ‘in the minds of the public, the
primary significance of a product feature or term is to identify the source of the
product rather than the product itself.” In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) (citation omitted).
Applicant acknowledges that the burden of proof for establishing the acquired
distinctiveness of its mark rests on its shoulders.21 The amount and character of
evidence required to establish acquired distinctiveness depends on the facts of each
case and will vary with the degree of descriptiveness of the mark. See In re K-T Zoe
Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788-89 (Fed. Cir. 1994); Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 6 USPQ2d at 1004; In re ActiveVideo
Networks, Inc., 111 USPQ2d 1581, 1606-07 (TTAB 2014); In re White Jasmine LLC,
106 USPQ2d 1385, 1395 (TTAB 2013).
The sufficiency of the evidence offered to prove acquired distinctiveness must be
evaluated in light of the nature of the designation. Highly descriptive terms are less
likely to be perceived as trademarks, and therefore more substantial evidence of
acquired distinctiveness will ordinarily be required to establish their
distinctiveness. In re Tennis Industry Association, 102 USPQ2d 1671, 1681 (TTAB
2012). In determining whether distinctiveness has been acquired, the Board may
examine copying, advertising expenditures and sales success; length and exclusivity
of use; unsolicited media coverage; and consumer studies. In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). Our ultimate Section 2(f)

21 Reply Brf., (10 TTABVUE 6). Applicant has the burden to establish a prima facie case of
acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 6
USPQ2d at 1006.
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analysis and determination in this case is based on all of the evidence considered as
a whole.
In support of its claim of acquired distinctiveness, Applicant offers a declaration
of substantially exclusive and continuous use of its mark in commerce for at least a
five year period22 and the Declaration of Betty Pelc, Vice President of Applicant,
with additional evidence.23 Trademark Rule 2.41(b), 37 C.F.R. § 2.41(b), provides
that a statement of substantially exclusive and continuous use in commerce for the
five years before the date on which the claim of distinctiveness is made “may, in
appropriate cases, be accepted as prima facie evidence of distinctiveness.” However,
the rule also states that “further evidence may be required.” Id.
Although Ms. Pelc’s Declaration states that since the date of its first sale, the
HARDWOOD WRENCH tool has been extensively and constantly marketed and
advertised throughout the United States through email campaigns, fliers,
catalogues, technical data sheets, online videos, websites, trade show displays and
magazine advertisements, only copies of a few pages of Applicant’s websites were
provided.24 Similarly, while Ms. Pelc testified that the HARDWOOD WRENCH tool
“has also been a focal point at multiple trade shows”25 no information regarding the
location or the attendance numbers at the trade shows were provided nor were any
images showing the HARDWOOD WRENCH product on display at any of the trade

22 May 7, 2014 Response to December 4, 2013 Office Action, TSDR pp. 1, 3.
23 Exhibit 2 Declaration of Betty Pelc, November 17, 2014 Request for Reconsideration after
Final (TSDR pp. 20-27 of 27).
24 Id. ¶ 3 (TSDR pp. 20-21 of 27).
25 Id. ¶ 4 (TSDR p. 21 of 27).
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shows provided. Ms. Pelc testified that due to the fact that Applicant markets and
advertises multiple products, it was “not possible to attribute a specific marketing
or advertising amount to the HARDWOOD WRENCH tool alone.”26 She also
testified that the HARDWOOD WRENCH “is not an inexpensive tool, selling at
retail for up to $239” and that revenues received from wholesale and retail sales of
the HARDWOOD WRENCH tool from 2009 to 2014 totaled $244,828.27
In considering the evidence submitted by Applicant, including its statement of
substantially exclusive and continuous use in commerce for the five years before the
date on which the claim of distinctiveness is made, and the evidence detailing its
sales history, we find that this showing does not indicate recognition of the term
HARDWOOD WRENCH as a trademark. Moreover, there is no evidence putting
Applicant’s sales into context to show whether Applicant’s sales are significant vis-
à-vis the sales of competing products. Additionally, despite evidence of Applicant’s
sales, there is no evidence of the extent to which the public perceives the term
HARDWOOD WRENCH as indicating source in Applicant. In re Tennis Industry
Association, 102 USPQ2d at 1682 (“Notably, the record contains little direct
evidence that the relevant classes of consumers to whom applicant’s services are
directed view [the mark] as a distinctive source indicator therefor.”). Upon review of
the totality of evidence submitted by Applicant, the record lacks sufficient evidence

26 Id. ¶ 5 (TSDR p. 21 of 27).
27 Id. ¶¶ 6-7 (TSDR p. 21 of 27). In its November 3, 2013 Request for Reconsideration after
Final Action, Applicant indicated that it sold 3465 units of product for revenues of $378,926
(TSDR p.3 of 53). However, the Declaration of Ms. Pelc dated November 17, 2014 claims
that revenues from 2009-2014 amounted to $244,828. Whether the revenue collected was
$378,926 or $244,828, does not impact the result in this case.
Serial No. 85798512
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showing how the term HARDWOOD WRENCH points uniquely and exclusively to
Applicant.
In this particular case, more persuasive evidence than that offered here is
necessary to establish that Applicant’s mark HARDWOOD WRENCH has acquired
distinctiveness. In view of the foregoing, we find that Applicant’s declarations and
other evidence are insufficient to establish that Applicant’s mark has acquired
distinctiveness under Section 2(f).
III. Conclusion
The evidence shows that the components of the applied-for mark are descriptive
and retain their descriptive meaning when combined such that the overall
composite is merely descriptive. The applied-for mark is a combination of
descriptive terms that immediately conveys a feature or the purpose of Applicant’s
goods, namely, a tool used for working with wood. Both the individual components
and the composite result of the applied-for mark are descriptive of Applicant’s goods
and do not create a unique, incongruous or non-descriptive meaning in relation
thereto. Applicant has also failed to make a prima facie showing under Section 2(f)
that HARDWOOD WRENCH has acquired distinctiveness.
Decision: The refusal to register Applicant’s mark HARDWOOD WRENCH
under Section 2(e)(1) of the Trademark Act on the ground that the mark is merely
descriptive is affirmed, and Applicant has failed to make a sufficient showing of
acquired distinctiveness under Section 2(f) of the Act to permit registration on the
Principal Register.