Top Grade Construction, Inc.

Trademark Trial and Appeal Board

Sep 1, 2009

No. 77315118 (T.T.A.B. Sep. 1, 2009)

Mailed: 9/1/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Top Grade Construction, Inc.
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Serial No. 77315118
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David H. Jaffer of Pillsbury Winthrop Shaw Pittman for Top
Grade Construction, Inc.

Alyssa Paladino Steel, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Cataldo and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Top Grade Construction, Inc. filed, on October 26,
2007, an intent-to-use application to register the mark TOP
GRADE MATERIALS for “aggregate rock composed of crushed
stone and alluvium sand and gravel” in International Class
19.
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77315118
2
applied to applicant’s goods, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that its applied-for mark is a unique
composite mark that is suggestive. Even if the individual
terms of the mark are descriptive, applicant contends that
the terms form a distinctive combination that, as a whole,
is suggestive. To the extent that there is any doubt on
the issue, applicant urges that the doubt be resolved in
its favor.
The examining attorney maintains that the mark sought
to be registered “is comprised of laudatory wording
followed by descriptive or generic wording.” (Brief, p.
5). Thus, the examining attorney concludes, the proposed
mark as a whole describes the high quality of applicant’s
goods or materials. Specifically, the term “top grade” is
indicative of the quality of applicant’s goods, and the
word “materials” identifies the goods as being a form of
non-metallic building materials. In support of the refusal
the examining attorney relied upon two registrations owned
by applicant of the marks TOP GRADE and TOP GRADE
CONSTRUCTION (“CONSTRUCTION” disclaimed), both covering
services and both registered under Section 2(f) upon a
Ser. No. 77315118
3
showing of acquired distinctiveness. The examining
attorney also introduced dictionary definitions of “top
grade” and “material”; excerpts from applicant’s website;
search result summaries using Google’s search engine; one
third-party registration of the mark TOP GRADE FLOORS
showing that the registration issued pursuant to Section
2(f); and copies of other third-party registrations
covering goods identical or similar to those herein. These
registrations are of marks that include the term
“MATERIALS” showing that the term is disclaimed.
A term is deemed to be merely descriptive of goods or
services, within the meaning of 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. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient 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 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
Ser. No. 77315118
4
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 it is
being used on or in connection with the 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). It is settled that “[t]he question
is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The “average” or “ordinary” consumer is the class or
classes of actual or prospective customers of applicant’s
goods or services. In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
The examining attorney’s dictionary evidence shows
that the term “top grade” is defined as “surpassing in
quality: ‘top-grade ore’; high-grade; top-quality; best.”
(www.thefreedictionary.com). The term “material” is
defined as “the substance or substances out of which a
thing is or can be made.”
Ser. No. 77315118
5
Based on the evidence of record, we conclude that TOP
GRADE MATERIALS is merely descriptive of applicant’s
aggregate rock. The term “top grade” describes high
quality, and the term “materials,” as defined, is broad
enough to encompass applicant’s “aggregate rock composed of
crushed stone and alluvium sand and gravel.” The
individual merely descriptive terms “top grade” and
“materials” retain their descriptive character when
combined to form the entirety of applicant’s mark. The
mark immediately informs prospective customers that
applicant’s aggregate rock is made of high-grade or the
best materials. No imagination is required to discern this
purported feature or characteristic of the goods.
Our finding of mere descriptiveness with respect to
applicant’s goods is consistent with the manner in which
applicant describes itself on its website as “the premier
grading and paving contractor” in its area. [emphasis
added]. Further, although applicant’s earlier
registrations do not control the merits of this appeal (as
is also the case with the third-party registrations showing
disclaimers of “MATERIALS”), our finding is also consistent
with applicant’s registrations that issued under Section
2(f) upon a showing of acquired distinctiveness:
Registration No. 3461268 of TOP GRADE CONSTRUCTION
Ser. No. 77315118
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(“CONSTRUCTION” disclaimed) and Registration No. 3461269 of
TOP GRADE, both for “paving contractor services;
construction grading services.” See, e.g., Yamaha Int’l
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988). See also TMEP §1212.02(b) (5th
ed. 2007) [“For procedural purposes, a claim of
distinctiveness under §2(f), whether made in the
application as filed or in a subsequent amendment, may be
construed as conceding that the matter to which it pertains
is not inherently distinctive (and thus not registrable on
the Principal Register absent proof of acquired
distinctiveness). Once an applicant has claimed that
matter has acquired distinctiveness under §2(f), the issue
to be determined is not whether the matter is inherently
distinctive but, rather, whether it has acquired
distinctiveness.”]
We have made our determination without giving any
probative value to the GOOGLE search results submitted by
the examining attorney. A search of “top grade quality”
resulted in 732,000 hits, and the summary shows excerpts of
the first ten hits. Searches of “top grade materials” and
“top grade” and “materials” revealed 26,400 hits and
501,000 hits, respectively, and each summary shows excerpts
of the first ten hits. This evidence, however, does not
Ser. No. 77315118
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provide the context within which the terms are used.
“Search engine results – which provide little context to
discern how a term is actually used on the webpage that can
be accessed through the search result link – may be
insufficient to determine the nature of the use of a term
or the relevance of the search results to registration
considerations.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007).
Decision: The refusal to register is affirmed.