Tokuyama CorporationDownload PDFTrademark Trial and Appeal BoardApr 26, 2013No. 85046949 (T.T.A.B. Apr. 26, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 26, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Tokuyama Corporation _____ Serial No. 85046949 _____ George W. Lewis of Jacobson Holman PLLC for Tokuyama Corporation. Kevon L. Chisolm, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _____ Before Bucher, Bergsman and Masiello, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Tokuyama Corporation (“applicant”) filed an intent-to-use application to register the mark Fresco Giclee, in standard character form, for the goods set forth below (as amended): Printing substrate in the nature of lime plaster sheet on which art, posters and photographs can be printed, in Class 16; and Sheets of lime plaster for covering walls; sheets of lime plaster for covering ceilings; building materials, namely, lime plaster sheet for use on interior walls and lime plaster sheet for use on interior ceilings, in Class 19. Serial No. 85046949 2 Applicant also based its application on Japanese Registration No. 5353106, issued on April 21, 2010. The Trademark Examining Attorney refused to register applicant’s mark on the ground that it is merely descriptive. Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1). According to the Trademark Examining Attorney, applicant’s goods are “specifically designed to contain giclee prints of famous frescoes” and, therefore, FRESCO GICLEE merely describes a function, feature or characteristic of the goods.”1 A term is merely descriptive if it “immediately conveys … knowledge of the ingredients, qualities, or characteristics of the goods … with which it is used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods, and the possible significance that the mark would have to the average purchaser of the goods in the marketplace. See In re Chamber of Commerce, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture 1 Trademark Examining Attorney’s Brief, p. 4 (unnumbered). Serial No. 85046949 3 Lending Assocs., 226 USPQ 285 (TTAB 1985). In other words, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). However, “if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). In this regard, “incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498 (the association of applicant’s mark TENNIS IN THE ROUND with the phrase “theater-in-the-round” creates an incongruity because applicant’s services do not involve a tennis court in the middle of an auditorium). A “fresco” is defined as follows: noun … 1. painting done on fresh plaster: a painting on a wall or ceiling done by rapidly brushing watercolors onto fresh damp or partly dry plaster Serial No. 85046949 4 2. technique of painting on fresh plaster: the technique or method of painting on fresh plaster transitive verb … paint wall or ceiling with fresco: to paint a fresco on a wall or ceiling2 In fact, applicant defined “Fresco” as “a style of painting done on wet lime walls or ceilings founded around the 14th century.”3 Giclee printing is a process that “delivers a fine stream of ink resulting in vivid, pure color and exceptional detail that is suitable for museum or gallery display.”4 In his February 23, 2012 Office action, the Trademark Examining Attorney submitted an excerpt from the EveryLampShade.com website advertising the sale of a “Tuscan Fresco Giclee Set of Four Shades.”5 These eye-catching clip-on shades are made using the giclee print process. The specially chosen pattern is printed on high-quality canvas. The giclee printing process allows for the precise reproduction of rich color. This website excerpt displays “Fresco Giclee” as a unitary term identifying the giclee printing process to make fresco reproductions. 2 MSN Encarta (msn.com) derived from Encarta World English Dictionary [North American Edition] (2009) attached to the September 10, 2010 Office action. 3 January 31, 2012 response to Office action. 4 AllPosters.com attached to the September 10, 2010 Office action. 5 The Trademark Examining Attorney also submitted excerpts from several other websites advertising the sale of famous fresco paintings reproduced by the giclee printing process. However, those websites did not use the term FRESCO GICLEE as a unitary descriptive term. Serial No. 85046949 5 In its January 31, 2012 response, applicant provided information regarding its products. Applicant explained it “has developed a slaked lime sheet that can easily make FRESCO [sic] picture from digital printing.” Applicant describes the benefits of its process as creating “new Artistry from digital data.” We find that within the context of printing substrates in the nature of lime plaster sheets and lime plaster sheets for use on interior walls and ceilings, the mark FRESCO GICLEE directly and precisely conveys to consumers that the product is a surface on which images may be printed by the giclee process such that the resulting printed product will appear to be a fresco. Applicant argues that its description of goods makes no reference to anything remotely related to giclee printing.6 However, applicant’s argument presupposes that the test for descriptiveness requires looking at the mark and then attempting to determine whether you can identify the goods. As indicated above, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In this case, the identification of goods in Class 16 is broad enough to include printing substrates that are suitable for printing by the giclee process; and the identification of goods in Class 19 is broad enough to include lime plaster sheets that have been preprinted by the giclee process, for use on interior walls and ceilings. The term FRESCO GICLEE directly conveys to consumers that applicant’s 6 Applicant’s Brief, pp. 3 and 5 (unnumbered). Serial No. 85046949 6 lime plaster sheet printing substrates may be used for making fresco-like prints by the giclee printing process; and that applicant’s printed lime plaster building materials look like frescos. That the mark immediately conveys to one seeing or hearing it that applicant’s lime plaster sheets may be used to display fresco-like paintings makes it merely descriptive. See In re Abcor Development Corp., 200 USPQ at 217 (a mark is merely descriptive if it immediately conveys information regarding a significant function, purpose, or use of the goods). See also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) (SOLUTIONS merely descriptive of the purpose of applicant’s computer hardware – to resolve a problem – and must be disclaimed); In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006) (ERGONOMIC held merely descriptive of ceiling fans); In re Cent. Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports clothing and game equipment); In re Nat’l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977) (BURGER held merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jams and jellies). Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation