The Melting Pot Corp.

Trademark Trial and Appeal Board

Mar 20, 2003

No. 75787879 (T.T.A.B. Mar. 20, 2003)

Mailed: March 20, 2003
Paper No. 21
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Melting Pot Corp.
________
Serial No. 75/787,879
_______
James C. Wray for The Melting Pot Corp.
Edward Nelson, Trademark Examining Attorney, Law Office 114
(K. Margaret Lee, Managing Attorney).
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Melting Pot Corp. has filed an application to
register PBC POSTAL BUSINESS CENTER and design as shown
below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/787,879
2
for “providing for the rental of mail boxes, mailing
articles and packaging articles for transportation.”1
Applicant has appealed the Trademark Examining
Attorney’s requirement that applicant disclaim POSTAL
BUSINESS CENTER apart from the mark as shown, and his final
refusal to register the mark absent compliance with the
disclaimer requirement. Trademark Act Section 6, 15 U.S.C.
§1056. Applicant and the Examining Attorney have filed
briefs. No oral hearing was requested.
It is the Examining Attorney’s position that the
phrase “POSTAL BUSINESS CENTER” is merely descriptive of
applicant’s recited services under Section 2(e)(1), 15
U.S.C. §1052(e)(1). According to the Examining Attorney,
POSTAL BUSINESS CENTER “describes the fact that applicant
is providing a business establishment or center which is
the location from which or by which postal business can be
transacted.” (Brief, p. 2). In support of the refusal to
register, the Examining Attorney submitted the following
definitions taken from The American Heritage Dictionary of
the English Language (3d ed. 1992):
postal: Of or relating to a post office or mail
service.
1 Serial No. 75/787,879, filed August 31, 1999, based on use of
the mark in commerce, alleging first use and first use in
commerce at least as early as July 1997.
Ser No. 75/787,879
3
business: no. 3. A commercial enterprise or
establishment; no. 5 Commercial dealings;
patronage.
center: no. no. 5.a. A place where a particular
activity or service is concentrated.
Further, the Examining Attorney made of record the
following four excerpts from the NEXIS database which refer
to “postal business (center)”:
“One might think that electronic mail would
impact the postal business. But mail’s been
around for years, and the volume of mail has
continued to grow . . .”
(The Deseret News, April 14, 2000);
All are available free at your local post office
or Postal Business Center.
(DM News, April 10, 2000);
Mail Boxes is the largest franchiser of postal-
business stores, with about 4,100 locations in
29 countries.
(The San Diego Union-Tribune, March 31, 2000);
and
Some students have considered going into the
postal business in the future, and they feel
the postal work is preparing them for the job.
(The Des Moines Register, March 8, 2000).
Applicant, in urging reversal of the refusal to
register, argues that the Examining Attorney has dissected
the phrase POSTAL BUSINESS CENTER into its component parts,
and that POSTAL BUSINESS CENTER, when considered as a
whole, is an incongruous combination; and that the
Examining Attorney’s evidence is insufficient to establish
Ser No. 75/787,879
4
that the phrase is merely descriptive of applicant’s
services.
A term is deemed merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
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 or
services in order for it to be considered merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them.
Whether a phrase is merely descriptive is determined not in
the abstract but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or services
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979).
We have carefully considered the evidence of record
and the arguments made by applicant and the Examining
Ser No. 75/787,879
5
Attorney, and we find that POSTAL BUSINESS CENTER is merely
descriptive as applied to applicant’s services, and that it
therefore must be disclaimed. We find that each of the
words, POSTAL, BUSINESS, and CENTER is merely descriptive
of the services, and that the composite term POSTAL
BUSINESS CENTER is likewise merely descriptive. The word
POSTAL describes a feature or characteristic of applicant’s
services in that they involve the rental of mail boxes and
mailing articles. In addition, BUSINESS is descriptive of
applicant’s services, which are commercial in nature.
Likewise, we find that CENTER is merely descriptive because
it describes the place where applicant’s services are
rendered. Also, three of the NEXIS excerpts show use of
“postal business” to describe mail services.2
We are not persuaded by applicant’s contention that
the Examining Attorney’s mere descriptiveness finding is
based on an impermissible dissection of POSTAL BUSINESS
CENTER into its component parts. While we consider the
individual terms, it is the mark in its entirety that must
be considered in determining whether the mark is merely
descriptive. P.D. Beckwith, Inc. v. Commissioner, 252 USPQ
2 The remaining excerpt shows the phrase “Postal Business
Center.” While in some instances the use of capital letters may
indicate that a phrase is being used as a trademark, it is not
exactly clear from this excerpt how “Postal Business Center” is
being used.
Ser No. 75/787,879
6
538, 545-46 (1920). However, “[i]t is perfectly acceptable
to separate a compound mark and discuss the implications of
each part thereof . . . provided that the ultimate
determination is made on the basis of the mark in its
entirety.” In re Hester Industries, Inc., 230 USPQ 797,
798 n. 5 (TTAB 1986). In this case, we find that the
merely descriptive terms that comprise applicant’s mark,
i.e., POSTAL, BUSINESS and CENTER are likewise merely
descriptive when considered together. The phrase POSTAL
BUSINESS CENTER immediately conveys to purchasers and
prospective purchasers of applicant’s services that
applicant is operating a center where businesses or other
commercial establishments may post and receive their mail.
Further, contrary to applicant, we find nothing incongruous
about the combined phrase POSTAL BUSINESS CENTER as applied
to the recited services.
As for the asserted “uniqueness” of the phrase POSTAL
BUSINESS CENTER, it is well settled that the fact that an
applicant may be the first and only user of a term does not
justify registration of the term where the only
significance projected by the term is merely descriptive,
as we find to be the case here. See In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB
1983).
Ser No. 75/787,879
7
Decision: The requirement for a disclaimer of POSTAL
BUSINESS CENTER, and the refusal to register based on
applicant’s failure to submit such disclaimer, are
affirmed. However, in the event that applicant submits the
required disclaimer within thirty days of the mailing date
of this decision, the refusal to register will be set
aside, the disclaimer will be entered, and the application
will proceed to publication.