The Valspar Corp.

Trademark Trial and Appeal Board

Aug 12, 2003

No. 75439331 (T.T.A.B. Aug. 12, 2003)

Mailed: Paper No. 21
August 12, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Valspar Corporation
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Serial No. 75/439,331
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John A. Clifford and Kristina M. Foudray of Merchant &
Gould P.C. for The Valspar Corporation.
Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
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Before Simms, Hairston and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
The Valspar Corporation has filed an application to
register GREAT COAT as a mark for “interior and exterior
paints, and interior and exterior stains,” asserting a bona
fide intention to use the mark in commerce for such goods.
Registration is sought on the Principal Register. During
examination, applicant voluntarily offered, and the
examining attorney accepted and entered, a disclaimer of
exclusive rights to the word COAT.
This Disposition Is Not
Citable as Precedent
of the TTAB
Ser No. 75/439331
2
Registration has been refused by the examining
attorney, on the ground that the term GREAT COAT combines a
laudatory term, GREAT, with a descriptive term, COAT, and
that the composite is, therefore, barred from registration
because of Section 2(e)(1) of the Lanham Act, 15 U.S.C. §
1052(e)(1). When the refusal was made final, applicant
appealed. Briefs have been filed, but applicant did not
request an oral hearing. We affirm the refusal of
registration.
The examining attorney, in support of the refusal of
registration, has provided dictionary definitions of
“great” and of “coat.” The former word is defined as
meaning, among other things, “remarkable or outstanding in
magnitude, degree or extent,” and “superior in quality or
character; noble.” The latter word is defined to mean “a
layer of material coating something else; a coating: a
second coat of paint.” Also offered in support of the
refusal of registration are third-party registrations that
show marks with one of the two words and a disclaimer of
that word, or marks with one of the two words and that have
been registered only on the Supplemental Register or on the
Principal Register upon a showing of acquired
distinctiveness. Finally, the examining attorney has
submitted two excerpts from the NEXIS database of articles
Ser No. 75/439331
3
and other news reports, and reprints of pages from three
websites. One of the NEXIS excerpts and two of the web
sites use the term “great coat” in references to paint jobs
completed on houses. The other NEXIS excerpt uses the term
“great coats” in referencing nail polish and manicures; the
third web site uses the term “great coat” in describing the
paint job of a collectible die-cast model car.
Applicant has attempted to counter the examining
attorney’s submissions by pointing to third-party
registrations that show marks including the word GREAT have
been registered on the Principal Register without a
disclaimer of that word and without resort to Section 2(f)
of the Lanham Act.1 For example, it appears GREAT FINISHES
has been registered on the Principal Register for “exterior
and interior paints, paint primers, wood stains, lacquers
in the nature of coatings, and varnishes.”2 As applicant
has disclaimed exclusive rights in the COAT portion of its
mark, there does not appear to be any dispute that “coat”
is a descriptive term when used on or in connection with
paints and stains; thus, we need not discuss either the
1 Applicant’s submissions are not copies of the registration
certificates; nor are they reprints from the Office’s electronic
database of registered and pending marks. Rather they are copies
from a private company’s database.
2 Registration no. 2,019,696, issued November 26, 1996.
Ser No. 75/439331
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examining attorney’s or applicant’s submissions (the latter
made prior to applicant’s submission of a disclaimer of
COAT) regarding the proper characterization of that word.
Applicant argues that the composite GREAT COAT is
merely suggestive for its goods. Noting that the identical
mark has previously been registered for “paints” (a
registration that has since expired), applicant argues that
this is significant evidence that the Office considers the
composite to be merely suggestive, not descriptive.
Applicant also argues that it was unable to discover any
registrations in international class 2 for marks including
the word GREAT, wherein that word was the subject of a
disclaimer. Finally, applicant argues that it was “unable
to find any case that has determined whether the use of the
term ‘GREAT’ in a trademark is laudatory, descriptive, or
suggestive,”3 so that the Office’s “past handling of the
3 Applicant does rely on In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995), which dealt with an attempt to register SUPER
BUY, as stating or suggesting that GREAT BUY would be considered
suggestive, in contrast with the involved mark SUPER BUY. On the
other hand, the examining attorney relies on Popular Bank v.
Banco Popular, 9 F.Supp.2d 1347 (S.D.Fla. 1998) and its citation
to Great S. Bank v. First S. Bank, 30 USPQ2d 1522 (Sup. Ct. Fla.
1993), for the proposition that “great” is a laudatory
descriptive term.
Each (applicant and the examining attorney) has criticized the
other’s reliance on the case law it has cited. We agree that
these decisions deal with the question of the characterization of
“great” only in dicta. Nonetheless, when fairly read, they tend
to provide more support for the conclusion that “great” is
laudatory rather than suggestive.
Ser No. 75/439331
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term GREAT in other marks for paint products is
particularly relevant.”
We admit that inconsistent Office handling of
applications to register marks that include the word GREAT
is troubling. Nonetheless, the Board is duty-bound to
decide each case based on the record before it, without
regard to whether other marks have correctly or incorrectly
been registered. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“the Board …
must assess each mark on the record of public perception
submitted with the application”). Thus, we focus on the
dictionary definitions, the one relevant NEXIS excerpt, and
the three website entries in the record for what they
reveal about likely public perception, more than we focus
on the third-party registration submissions.
A mark is merely descriptive if it immediately
conveys qualities or characteristics of the
goods. In re Gyulay, 820 F.2d 1216, 1217, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987). However, if a
mark requires imagination, thought, and
perception to arrive at the qualities or
characteristics of the goods, then the mark is
suggestive. Id. A suggestive mark qualifies for
registration without secondary meaning. Id. The
perception of the relevant purchasing public sets
the standard for determining descriptiveness. In
re Bed & Breakfast Registry, 791 F.2d 157, 160,
229 USPQ 818, 819 (Fed. Cir. 1986).
In re Nett Designs Inc., 57 USPQ2d at 1566.
Ser No. 75/439331
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As the Federal Circuit has noted, a term may possess
both elements of descriptiveness and suggestiveness. Id.
As with the word ULTIMATE in the Nett Designs decision, the
word GREAT may be considered suggestive insofar as it “does
not define any particular characteristic” of applicant’s
product, but “also has some elements of descriptiveness
because it has a laudatory or puffing connotation.” Id.
We think it beyond dispute that, as proposed for use
on or in connection with paints, GREAT has a clearly
laudatory connotation. It does not take on a double
entendre or have its meaning altered when coupled with the
admittedly descriptive word COAT. As the NEXIS and web
site evidence reveals, applied paint may be said to be a
“great coat of paint” and such phrase has a clearly
laudatory meaning that it takes no imagination to discern.
Likewise, even when the phrase is shortened to GREAT COAT,
it is immediately clear that the connotation of that term,
when used on or in connection with paint, indicates that
the purchaser will get a “great coat of paint” from the
product.
Any paint manufacturer should be left free to tout its
products as providing a “great coat” upon application.
Moreover, we note that while the record is rather thin, we
do not require the same type of record as would be required
Ser No. 75/439331
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if the refusal of registration were based on a conclusion
that GREAT COAT was generic and therefore to be removed
from any possible use as a mark. Because the refusal is
based on the ground of descriptiveness, and GREAT COAT may
still be registered in the future on a showing of acquired
distinctiveness, we do not require as great an evidentiary
showing as if the refusal were on the ground of
genericness. Cf. In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999), wherein the
Federal Circuit held that more than mere evidence of the
genericness of component parts of a mark would be required
when a composite phrase is to be refused as generic.
We find that GREAT COAT, if used on or in connection
with paints and stains, would immediately be perceived as a
laudatory description of the products as providing a great
coat of paint or stain and, accordingly, is properly
refused registration as descriptive.
Decision: The refusal under Section 2(e)(1) of the
Lanham Act is affirmed.