Tier One Brands, L.L.C.

Trademark Trial and Appeal Board

Jun 19, 2003

No. 75702467 (T.T.A.B. Jun. 19, 2003)

Mailed: June 19, 2003
Paper No. 15
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tier One Brands, L.L.C.
________
Serial No. 75/702,467
Serial No. 75/980,456
_______
James W. Armstrong of Sacks Tierney, P.A. for Tier One Brands,
L.L.C.
Teresa Rupp, Senior Trademark Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_______
Before Hohein, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Tier One Brands, L.L.C. has filed applications to
register the mark "CRAYONS" for "hair conditioners, body lotions,
baby oils, suntan lotions, sunscreen, sun block preparations,
non-medicated lip balms and liquid soaps for the hands, face and
body"1 and "hair shampoo, [and] bubble bath."2
1 Ser. No. 75/702,467, filed on May 11, 1999, which is based on an
allegation of a bona fide intention to use the mark in commerce.
2 Ser. No. 75/980,456, filed on May 11, 1999, which was created from
application Ser. No. 75/702,467 following applicant's submission, on
November 7, 2000, of a request to divide such application together
with an amendment to allege use of the mark which claims a date of
first use anywhere and in commerce, with respect to the above goods,
of September 14, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 75/702,467 and 75/980,456
2
Registration has been finally refused in each case
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that, when used in connection with
applicant's goods, the mark "CRAYONS" is merely descriptive of
them. Specifically, the Senior Trademark Attorney (hereinafter
referred to as the Examining Attorney) contends in her brief that
such mark "immediately describes a feature of the goods, i.e. the
crayon shaped containers in which the goods will be sold."
Applicant, in each case, has appealed. Briefs have
been filed, but an oral hearing was not requested. Because the
issue of mere descriptiveness is essentially the same in each
instance, the appeals are being treated in a single opinion. We
reverse the refusal to register in each case.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of any 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 to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term 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
Ser. Nos. 75/702,467 and 75/980,456
3
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. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
The Examining Attorney, as support for her position,
relies upon the following excerpts from her searches of the
"NEXIS" electronic database (emphasis added):
"Crayons Bubble Bath from 24/7, Inc. of
Scottsdale, AZ, is available in an Apple
scented No Tears Formula. Packaged in a 12
fl. oz. (355ml) crayon-shaped plastic bottle,
the bubble bath may also be used as a liquid
soap ... according to labels." -- Product
Alert, July 12, 1999;
"Minnetonka also taps one of the other
primary sales generators in the segment:
play value. The company's Bathtime Playables
line features such items as finger paint
bubble bath and soap crayons with characters
from 'Sesame Street' and 'Looney Tunes.'" --
Chain Drug Review, March 15, 1999;
"Crayola has come out with a new set of
four bath crayons (about $3.50). They come
in red, green, blue and yellow for coloring
bathtubs, walls and little bodies - and they
wash off in a flash." -- The Gazette
(Montreal), December 1, 1994;
"SHAMPOO Creayted [sic] for Kids, new
from DeVere Corp., ... is packaged in an
eight-ounce plastic container shaped and
decorated like a crayon." -- ASAP, March 1987
(article headlined: "The 'Crayon' Shampoo
Targets 3-10 Year Olds");
Ser. Nos. 75/702,467 and 75/980,456
4
"Nefertede Sterling, 7, quietly brought
in all the money from her crayon-shaped piggy
bank ...." -- N.Y. Times, November 11, 1995;
"Enlisting the help of teacher Jami
Robbins, ... Dyer brought her first offering
to school: two goldfish inside a crayon-
shaped aquarium." -- Daily Oklahoman; August
23, 1995;
"[T]heir short stop at the 5-foot tall
crayon-shaped container filled to the brim
with jelly beans paid off big time." -- St.
Petersburg Times, August 14, 1995; and
"In addition to the clothes, there are
shoes, baseball caps, barrettes and bows,
watches, suspenders, rain boots, jewelry,
backpacks and a wonderful crayon-shaped purse
that can be worn as a pendant." -- Atlanta
Journal & Constitution, September 1, 1991.
According to the Examining Attorney, such evidence "shows that
the term 'crayon' is often used to describe goods or containers
shaped like crayons" and, thus, "the applicant's mark is not
arbitrary as applied to the goods" involved herein but is,
instead, merely descriptive thereof.
In particular, the Examining Attorney maintains that
applicant is incorrect in arguing that the mark "CRAYONS" does
not describe any feature of the applicant's goods, pointing out
that:
[W]hen a product is sold in liquid form, as
is the case herein, the container for the
goods is not separable from the physical
product and therefore should be included when
deciding whether the mark describes "the
goods." Because of the liquid nature of the
applicant's goods it would be impossible to
use the goods without also seeing and using
the container for the goods. This is not a
situation where the packaging is discarded
shortly after purchase. In the consumer's
mind, the container for the goods, and the
liquid inside the container, are one in [sic]
Ser. Nos. 75/702,467 and 75/980,456
5
the same. Therefore, descriptiveness must be
determined in relation to the product as a
whole.
As authority for her position, the Examining Attorney relies on
In re Serv-A-Portion Inc., 1 USPQ2d 1915, 1916 at n. 4 (TTAB
1986), in which the Board, in upholding a requirement for a
disclaimer of the term "SQUEEZE N' SERV" as being merely
descriptive of goods identified as "ketchup," noted that "whether
it is the package itself, or the ketchup, or both which is (are)
squeezed, is immaterial" inasmuch as "it is understood that this
kind of food is necessarily sold in packages" and "hence the
package is as much a part of the goods as the ketchup." She
further contends, in consequence thereof, that:
Likewise, in the present application, the
applicant's [goods] ... are necessarily sold
in packages. Therefore, the packaging
becomes as much a part of the goods as the
physical product. There is no reason to
separate, for purposes of descriptiveness,
the product from the container or packaging.
.... Therefore, it is proper under Section
2(e)(1) to consider whether a mark describes
any feature of the packaging for the goods.
The Examining Attorney, in view thereof and in light of
the evidence set forth above, accordingly asserts that:
[T]he use of "crayon" to describe a
package is not unique to the applicant. When
confronted with the word "crayons," the
public would immediately know the shape of
the goods (or packaging for the goods).
As a result, she concludes that "applicant's mark CRAYONS is
merely descriptive under Section 2(e)(1) because it immediately
describes a feature of the goods, i.e., the crayon shaped
containers in which the goods will be sold."
Ser. Nos. 75/702,467 and 75/980,456
6
Applicant, on the other hand, while admitting that it
intends to package its goods "in containers shaped as crayons,"
insists that none of the items contemplated in its line of
"CRAYONS" products involves "any actual crayons or other
implements designed for drawing, writing upon or coloring
bathtubs, walls, children's bodies, or any other surfaces" and
that it does not intend to market any of its goods in such a
manner. Applicant also urges that the evidence furnished by the
Examining Attorney is insufficient to demonstrate that it is a
common practice, especially with toiletry items, to market
products in containers which are shaped like crayons.
In support thereof, applicant notes that, in response
to the initial Office Action, it submitted a declaration by its
one of its managers, David Barrick. With respect to the first
four of the eight "NEXIS" excerpts set forth previously in this
opinion, Mr. Barrick states among other things that he has
carefully reviewed such excerpts and has independently
investigated the products and companies discussed therein; that
the excerpt which refers to "Crayons Bubble Bath from 24/7, Inc.
of Scottsdale, AZ" involves the entity which was the predecessor
to applicant; that the excerpt which relates to the "Bathtime
Playables" line of products from Minnetonka does not involve any
products which are sold in crayon-shaped containers; that while
such product line "does include a set of three small, unwrapped
soap crayons marketed in a rectangular box, that box is clearly
labeled as a 'SESAME STREET' product with depictions of Sesame
Street characters"; that "[n]one of the goods" identified in
Ser. Nos. 75/702,467 and 75/980,456
7
applicant's applications "are soap crayons or any other type of
crayons"; that the excerpt which pertains to a set of four bath
crayons from Crayola involves goods which were "discontinued in
1995"; that none of the items in applicant's proposed line of
"CRAYONS" products includes "any actual crayons or other
implements designed for drawing, writing upon or coloring
bathtubs, walls, children's bodies, or any other surfaces," nor
does applicant intend to market its products in such a fashion;
that the excerpt which concerns a shampoo from DeVere Corp. which
is packaged in an eight-ounce plastic container shaped and
decorated like a crayon involves a company which not only "was
dissolved ... on April 20, 1992, and is therefore no longer in
business," but such company "actually ceased business in 1987
(prior to its dissolution)"; and that "[w]hile it is true that
[applicant] ... currently intends to package its ... products in
containers shaped as crayons," to the best of Mr. Barrick's
knowledge no other entity "is currently marketing or intending to
market children's shampoo, soap, bubble bath and any similar or
related products in crayon-shaped containers."
As to the remaining "NEXIS" excerpts, which involve
such diverse products as a piggy bank, an aquarium, jelly beans
and a purse which can be worn as a pendant, applicant argues that
the evidentiary value thereof is lacking inasmuch as none of the
products discussed therein "is remotely related to the shampoo,
bubble bath, and other goods" identified in applicant's
applications and that none of those excerpts indicates that the
products mentioned therein are actually sold in crayon-shaped
Ser. Nos. 75/702,467 and 75/980,456
8
containers. Applicant maintains, therefore, that there is no
evidence in the record that any person, other than applicant,
sells or intends to sell shampoo, liquid soaps, bubble baths or
similar toiletries in crayon-shaped packaging or containers, or
that the use of such packaging or trade dress is common or
widespread with regard to any other goods.
Applicant also asserts that the Examining Attorney has
utilized a "novel approach" to determining whether the mark
"CRAYONS" is merely descriptive by focusing on the packaging for
its goods, rather than the goods. Such an approach, applicant
contends, "has no support in the case law and otherwise
disregards the plainly 'arbitrary' nature of the 'CRAYONS'
designation as applied to [applicant's] ... bath, hair and skin
care products." Applicant emphasizes, in this respect, that
while it concededly intends to market its products in what it
characterizes as "fanciful crayon shaped containers," it does not
seek registration of a package design or other trade dress.
Instead, applicant stresses, it seeks to register "only the
unstylized word mark, 'CRAYONS,' as used in connection with those
goods" (underlining in original). Citing Webster's New World
Dictionary of American English (3rd coll. ed. 1994) at 324, which
defines "crayon" as meaning "either (1) 'a small stick of chalk,
charcoal, or colored wax, used for drawing, coloring, or
writing,' or (2) 'a drawing made with crayons,'" applicant argues
that none of the bath and skin care products set forth in its
applications "have any association with these generic meanings of
the word 'crayons,' nor are any of those products intended to be
Ser. Nos. 75/702,467 and 75/980,456
9
used as an implement for drawing, writing upon or coloring
bathtubs, walls, children's bodies or any other surfaces."
Applicant thus insists that its use of the word "crayons" in the
marketing of its products "clearly qualifies as 'arbitrary'"
rather than merely descriptive use.
Even more importantly, according to applicant, the
Examining Attorney did not cite any authority and, "despite a
diligent search," applicant asserts that it was unable to find
any cases, to "support the proposition that a word mark may be
found 'merely descriptive' simply because that mark may describe
the shape of the packaging for the referenced goods, but not the
goods themselves" (underlining in original). Applicant asserts
that the finding of mere descriptiveness in In re Serv-A-Portion
Inc., supra, "was not based upon the shape or any other non-
functional design elements of the ... [ketchup's] packaging, but
instead upon the fact that 'SQUEEZE N' SERV' directly described
how the product in question was used." According to applicant:
To extend trademark protection to such a
designation would therefore have foreclosed
competitors from also informing potential
purchasers how their similar products were
used--the central policy reason for denying
such protection to truly descriptive marks
(absent proof of secondary meaning). ....
In stark contrast, the shape of [applicant's]
... "CRAYONS" packaging does not, to any
extent, prevent competitors from describing
their bath, hair and skin care products to
consumers, nor is the shape of that packaging
necessary for the function of [applicant's]
... products. In other words, while those
products do require a container to hold them
(as do most, if not all commercially
distributed goods), the use of [applicant's]
... products does not require them to be
dispensed from a crayon-shaped container, as
opposed to any other shape.
Ser. Nos. 75/702,467 and 75/980,456
10
Applicant concludes that, "far from disqualifying a trademark on
descriptiveness grounds due to the owner's use of clever and
suggestive packaging, ... such [inherently] distinctive packaging
'serves the public purpose' by 'reinforcing' the basic source-
identifying purpose of trademark protection." Applicant insists,
therefore, that the mark "CRAYONS" is arbitrary, and hence is
registrable for its goods without a showing of acquired
distinctiveness pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), notwithstanding that it intends to market its
products in packaging or containers which resemble crayons.3
3 Applicant also argues in its brief that it "cited a number of Federal
trademark registrations in its response to the Examiner's initial
refusal to register 'CRAYONS' as examples of designations that have
been granted trademark protection even though they clearly describe
the shape of the containers used for the registrant's [sic] goods,"
but that "[t]he Examiner ... failed to address any of these citations
in her final refusal of registration." While the Examining Attorney,
in her brief, asserts that "merely listing the Registration Numbers
for third[-]party registrations does not make these registrations part
of the record" and that the "minimum acceptable evidence of third[-
]party registrations would be soft copies of these registrations," we
note that such objections were never raised previously (at a stage
where applicant procedurally could have rectified any deficiencies in
its proffered evidence by properly submitting either copies of the
actual registrations or the electronic equivalents thereof, i.e.,
printouts of the registrations which have been taken from the U.S.
Patent and Trademark Office's own computerized database, see, e.g., In
re JT Tobacconists, 59 USPQ2d 1080, 1081 at n. 2 (TTAB 2001)) and thus
are considered to have been waived. Moreover, although the Examining
Attorney goes on in her brief to state that "these registrations, even
if properly made of record, are not persuasive" because, inter alia,
some of the third-party registrations referred to by applicant either
issued on the Supplemental Register or registered on the Principal
Register pursuant to the provisions of Section 2(f) of the statute,
the copies of such registrations, which the Examining Attorney
attached to her brief as support for her assertions, cannot be
considered inasmuch as such evidence is untimely under Trademark Rule
2.142(d). In any event, we find that applicant's list of third-party
registrations is of no probative value. This is because there is no
indication that the marks which are the subjects thereof issued solely
on the Principal Register, without resort to the provisions of Section
2(f), and hence were not regarded as merely descriptive. In addition,
there is no evidentiary support for applicant's assertions that the
associated goods have in fact been marketed in containers or other
Ser. Nos. 75/702,467 and 75/980,456
11
Upon consideration of the evidence and arguments, we
agree with applicant that the mark "CRAYONS" is not merely
descriptive of its various goods, even if such goods are packaged
in containers designed to resemble the appearance of crayons.
Literally, as applicant has noted, none of its toiletry products,
nor any of the containers for such items, is a crayon. As is
plain from the previously indicated definition of the word, a
crayon is a solid object consisting of "a small stick of chalk,
charcoal, or colored wax, used for drawing, coloring, or
writing." Applicant's word mark "CRAYONS," therefore, clearly is
an arbitrary mark with respect to its goods, none of which is a
"soap crayon" or other solid object, and we find that such mark
is likewise arbitrary, on this record, when applicant's goods are
packaged in containers which resemble crayons.
In particular, while we do not disagree with the
Examining Attorney that a term which immediately and specifically
describes the container or other trade dress in which a product
is packaged (or the theme or motif utilized in providing a
service) may indeed be merely descriptive of the goods (or
services), see, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co.,
packaging which is shaped like the marks would respectively seem to
indicate (e.g., "MRS. BUTTERWORTH'S" for "table syrup, sold in bottles
shaped like 'Mrs. Butterworth'"; "BARREL OF MONKEYS" for "parlor game
of skill and balance, sold in barrel-shaped containers"; "THE ONE IN
THE WIDE MOUTH JUG" for "mounting and framing adhesives, sold in wide-
mouth jugs"; "BILLY BEE" for "honey, sold in bee-shaped bottles";
"GARBAGE PAIL KIDS" for "candy and chewing gum, sold in garbage pail-
shaped containers"; "BUBBLE TAPE" for "chewing gum, sold in package
shaped like a carpenter's measuring tape"; and "TOILET DUCK" for
"toilet cleaning preparations, sold in bottles with duck-shaped
necks").
Ser. Nos. 75/702,467 and 75/980,456
12
Inc., 280 F.2d 437, 126 USPQ 363, 364 (CCPA 1960)4 and In re
Ruffin Gaming, LLC, ___ USPQ2d ___, ___, 2002 TTAB Lexis 542 at
18-25, 2002 WL 1941140 at 12-17 (TTAB 2002),5 this record does
4 Interestingly, neither the Examining Attorney nor applicant appears
to be aware of (and hence has not discussed) such case, which holds
among other things that because the word "matchbox" is descriptive of
a box which is made to look as much like a matchbox as is practicable,
the mark "MATCHBOX SERIES" is merely descriptive of a series of toys
sold in simulated matchboxes. Specifically, in finding that "[t]he
merchandise in the form in which appellant puts it on the market is
aptly described as a series of matchbox toys," id., the Court reasoned
that:
"Matchbox" is, of course, a common English word
defined by Webster's Dictionary as "A box for holding
matches." A matchbox is still a matchbox if the matches
are removed and a toy is put in their place. We think the
word is just as descriptive of a box which is made to look
as much like a matchbox as is feasible so that the toys
packaged in it can appropriately be designated as a
"Matchbox Series" of toys.
Id. While, at first glance, such case might therefore seem to support
the Examining Attorney's position that a mark which describes the
shape of a product's container is merely descriptive of a feature of
the product, we find that it is distinguishable from the appeals
herein. This is because the word "matchbox," unlike the term
"crayons," denotes a specific kind of container or receptacle used as
packaging. As such, the mark "MATCHBOX SERIES" merely describes a
series of toys (or, for that matter, any other goods) packaged in a
container which is commonly known as a matchbox or one which is made
to look as much like a matchbox as is possible. The word "crayon," in
stark contrast, does not connote a receptacle or container of any
type; instead, as previously pointed out, it designates a type of
solid object consisting of "a small stick of chalk, charcoal, or
colored wax, used for drawing, coloring, or writing." Thus, as noted
above, the mark "CRAYONS" is arbitrary when used in connection with
applicant's toiletry products (none of which, to reiterate, is any
kind of a crayon). Such a word mark does not lose its arbitrary
nature simply because applicant has chosen to play up or reinforce its
"CRAYONS" mark by packaging its goods in containers which outwardly
resemble crayons.
5 We recognize that such case, in which the term "FISHERMAN'S WHARF"
was held to be merely descriptive of "entertainment services, namely,
live performances by a musical band, amusement arcades, casino
services, theatrical performances, vaudevilles and comedy performances
as well as hotel services, restaurant services, nightclub services
café services and providing convention facilities," was not decided
until after the Examining Attorney submitted her appeal brief in each
of these appeals. It is instructive, nonetheless, to note that the
Board therein, rather than laying down a per se rule that any term
which arguably could be used to designate thematically the trade dress
of a product or the décor of an entertainment facility is therefore
Ser. Nos. 75/702,467 and 75/980,456
13
not support such a finding as to the word mark "CRAYONS." As the
Barrick declaration furnished by applicant makes clear,
essentially the only users of crayon-shaped containers in
merely descriptive, announced the following as the test for whether
such a term should be considered merely descriptive (footnotes
omitted):
As a general proposition, we note that a term which
otherwise would be considered an arbitrary, fanciful or
suggestive mark, when used in connection with goods or
services to identify and distinguish the source thereof,
does not lose such characterization or status, and become
merely descriptive of the goods or services, simply because
the term could literally designate a theme of the goods or
services, e.g., the trade dress of a product or the decor
of an entertainment facility, when so used. That is, just
because such a term could thematically describe a trade
dress or decor, that does not make the term merely
descriptive if the trade dress or decor is arbitrary,
fanciful or suggestive, but if the trade dress or decor is
descriptive, then a term which describes such thematic
manner of use is merely descriptive. [Citations omitted.]
Each of the foregoing cases, of course, was determined
on its own facts and, in particular, the significance which
each of the subject marks had to the relevant public
encountering the terms at issue in connection with the
respective services. This appeal, however, is most
analogous to [In re Busch Entertainment Corp., 60 USPQ2d
1130, 1133-34 (TTAB 2000),] the ... case cited by the
Examining Attorney and from which, for present purposes,
the proposition may be extracted that, where the record
reveals that it is the intent of an applicant and a
practice or trend in the trade or industry to replicate or
otherwise simulate the ambiance or experience of a place
(in whole or meaningful part), then a term which names the
place, when used as a theme of the goods or services, is
generally considered to be merely descriptive of a
significant feature or characteristic of the goods or
services. See In re Busch Entertainment Corp., supra [in
view of evidence demonstrating a trend in theme park
industry of recreating the culture or history of foreign
lands and showing that "EGYPT" is the name of the ninth
land in the applicant's African-themed amusement park,
"EGYPT" found merely descriptive of amusement park services
inasmuch as term indicates subject matter or country being
imitated, at least in part, and would be so recognized by
consumers; as such, term identifies only an Egyptian theme
or motif rather than the source or origin of the services].
In re Ruffin Gaming, LLC, supra. Although Ruffin Gaming involved the
issue of the mere descriptiveness of a term which named a place rather
than an object, the same rationale should apply herein.
Ser. Nos. 75/702,467 and 75/980,456
14
connection with toiletry products have been applicant and its
predecessor, 24/7, Inc. The single other reported user of a
crayon-like container for a toiletry product, DeVere Corp., at
one time apparently did market shampoo but is no longer in
business. According to Mr. Barrick, such firm not only was
formally dissolved on April 20, 1992, but it actually ceased
business some five years prior thereto in 1987. Furthermore, as
applicant correctly points out, with the exception of a third
party's soap crayons, none of the remaining product references in
the record involves goods such as shampoo, bubble bath or other
toiletry items, and none of the diverse goods mentioned, ranging
from soap crayons and bath crayons to a piggy bank, an aquarium,
jelly beans and a purse which can be worn as a pendant, are
actually sold in crayon-shaped containers. While, as to the last
four of the goods just noted, three of those products were
described as crayon-shaped, the fourth product, namely, jelly
beans, was simply reported to have been displayed in a crayon-
shaped container. All of such relatively few references, in any
event, are to single and sporadic accounts or reports in the
press.
Consequently, while the Examining Attorney, citing In
re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020
(TTAB 1983), properly notes that, even if applicant is or intends
to be the first to use the term "CRAYONS" in connection with its
goods, that fact does not justify registration if the term is
merely descriptive, applicant is nonetheless correct that the
Ser. Nos. 75/702,467 and 75/980,456
15
evidence of record is insufficient to demonstrate that crayon-
shaped containers, packaging or other product trade dress is
common or widespread. Such evidence, likewise, is inadequate to
demonstrate that, as argued by the Examining Attorney, "the term
'crayon' is often used to describe goods or containers shaped
like crayons" (emphasis added) and, thus, "the applicant's mark
is not arbitrary as applied to the goods" involved herein. The
evidence of record, simply stated, fails to establish that it is
a practice or trend in the toiletries trade to package such goods
in crayon-shaped or crayon-like containers or other trade dress
resembling crayons, so that consumers of those products would
regard the word "CRAYONS" as merely describing a significant
characteristic or feature of the goods. Instead, as explained
above, such term is an arbitrary mark for applicant's bath, hair
and skin care products, with the marketing of its goods in
containers which resemble crayons serving to reinforce or
underscore the novelty inherent in the use of the word "CRAYONS"
as applicant's mark.6
In addition, as to the Examining Attorney's contention
that because the term "CRAYONS" merely describes the crayon-like
containers in which applicant packages or intends to package its
goods, such term merely describes a significant characteristic or
feature of applicant's goods, it is important to keep foremost in
mind that applicant's goods are various bath, hair and skin care
6 Clearly, if applicant had applied to register a crayon-shaped or
crayon-like container as a mark for its goods, the use of such novel
packaging as a mark would be as arbitrary and inherently distinctive
with respect to its products as is the use of the word mark "CRAYONS."
Ser. Nos. 75/702,467 and 75/980,456
16
products, none of which is a kind of crayon (e.g., a soap
crayon), and that its goods specifically are not containers even
though, due to the liquid nature of the goods, they must be
packaged in some sort of a container for marketing purposes. We
concur with applicant that a careful reading of the case relied
upon by the Examining Attorney, In re Serv-A-Portion Inc., supra,
indicates that the holding of mere descriptiveness therein "was
not based upon the shape or any other non-functional design
elements of the ... [ketchup's] packaging, but instead upon the
fact that 'SQUEEZE N' SERV' directly described how the product in
question was used." As stated by the Board, after noting the
immateriality of whether it was the package, the product, or both
which is squeezed:
In the case before us, one word (SQUEEZE)
merely describes a means of opening the
package, by squeezing, and the other (SERV)
one of its purposes, to serve the ketchup,
and we find nothing incongruous or
distinctive about the combination.
Accordingly, ... we conclude that SQUEEZE N'
SERV is merely descriptive of appellant's
goods ....
In re Serv-A-Portion Inc., supra at 1916-17.
The Examining Attorney's attempt to find the mark
"CRAYONS" to be merely descriptive of the containers for
applicant's goods simply because applicant intends to market its
toiletry products in crayon-like packaging is, in essence, "a
variation of the theory that a word, name, symbol, or device
which identifies a class of goods is a generic type of
identification and a unique product or product design is a class
unto itself." In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ
Ser. Nos. 75/702,467 and 75/980,456
17
394, 403 (CCPA 1982) (Nies, J., specially concurring). The
Examining Attorney's categorizing of applicant's goods under the
rubric of toiletry products sold in crayon-shaped or crayon-like
containers is consequently analogous to the situation in DC
Comics, 215 USPQ at 395, in which the Court reversed the Board's
affirmance of refusals to register, on the grounds of
descriptiveness and functionality, with respect to marks
consisting of an applicant's "particular drawings of three
characters, [known as] Superman, Batman and Joker," which were
sought to be registered as trademarks for "toy dolls."
Specifically, the Court therein, among other things,
was careful to point out that (footnote omitted):
Moreover, appellant cannot be considered
to have created a new product category, the
rubric of which (for example, "Superman
dolls") should remain available for all to
employ in commerce, simply by having
originated and promoted certain unique
characters and products, related to them.
The registration of appellant's drawings as
trademarks for toy dolls would not diminish
the store of common words and visual
representations which appellant's competitors
and the general public alike may freely use.
Hence, appellant would not be in a position
to impair competition in the sale of toy doll
figures, nor could it deprive the public of
access to imagery associated with toy dolls
generally or "super hero" or villain figures
in particular.
215 USPQ at 397. The same is likewise true herein with respect
to applicant's use of crayon-like containers in connection with
the marketing of its "CRAYONS" brand of toiletries. As Judge
Nies, specially concurring, additionally observed:
No principle of trademark law requires the
imposition of penalties for originality,
creativeness, attractiveness, or uniqueness
Ser. Nos. 75/702,467 and 75/980,456
18
of one's product or requires a holding that
the name arbitrarily selected to identify the
product, or a unique product design of a
product, cannot also function as an
identification of source. ....
215 USPQ at 403.
Decision: The refusal under Section 2(e)(1) is
reversed in each case.