Tractor Supply Co. of Texas, LP

Trademark Trial and Appeal Board

Apr 8, 2013

No. 85259333 (T.T.A.B. Apr. 8, 2013)

THIS OPINION IS A NOT
PRECEDENT OF THE TTAB

Mailed: April 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Tractor Supply Co. of Texas, LP
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Serial Nos. 85259331
85259332
85259333
85259335
85259338
_____

Robert P. Felber Jr. of Waller Lansden Dortch & Davis LLP for Tractor Supply Co.
of Texas, LP

Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney)
_____

Before Kuhlke, Wolfson and Shaw, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
On March 7, 2011, applicant, Tractor Supply Co. of Texas, LP, filed these
applications under Section 1(b) of the Trademark Act to register on the Principal
Register the mark TSC TRACTOR SUPPLY CO. in standard characters (“CO.”
disclaimed) for goods ultimately identified as “metal boxes; decorative wall plaques
made of common metal” in International Class 6,1 “trailers for use with road

1 Application Serial No. 85259331.
Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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vehicles” in International Class 12,2 “stools; home décor items, namely, decorative
wood signs; decorative wall plaques made of plastic or wood; furniture” in
International Class 20,3 “bottle openers” in International Class 21,4 and
“compressed pine pellets and wood shavings for use in animal bedding” in
International Class 31.5
The examining attorney refused registration pursuant to Section 6(a) of the
Trademark Act, 15 U.S.C. § 1056(a), based on applicant’s failure to comply with the
requirement to disclaim the wording “TRACTOR SUPPLY CO.” in Application
Serial No. 85259332 and “SUPPLY CO.” in the remaining applications on the
ground that the wording is merely descriptive of applicant’s goods within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act Section 2(e)(1) and,
therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to
comply with a disclaimer requirement is ground for refusal of registration. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd.,

2 Application Serial No. 85259332.

3 Application Serial No. 85259333.

4 Application Serial No. 85259335.

5 Application Serial No. 85259338.

Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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90 USPQ2d 1472 (TTAB 2007); In re National Presto Industries, Inc., 197 USPQ
188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of
the qualities, ingredients or characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed.
Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538,
543 (1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003). The determination of whether a mark is merely
descriptive must be made in relation to the goods or services for which registration
is sought. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d
1217, 1219 (Fed. Cir. 2012); In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (determination of mere descriptiveness must be made
not in the abstract, but in relation to the goods or services for which registration is
sought, the context in which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services).
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
It is not necessary, in order to find a mark merely descriptive, that the mark
Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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describe each feature of the goods or services, only that it describe a single,
significant ingredient, quality, characteristic, function, feature, purpose or use of
the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Associated
Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains
its merely descriptive significance in relation to the goods or services, the
combination results in a composite that is itself merely descriptive. In re Oppedahl
& Larson LLP, 71 USPQ2d at 1371. However, a mark comprising a combination of
merely descriptive components is registrable if the combination of terms creates a
unitary mark with a unique, nondescriptive meaning, or if the composite has a
bizarre or incongruous meaning as applied to the goods or services. See In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217
USPQ 363 (TTAB 1983); and TMEP § 1209.03(d).
In support of her position that the term TRACTOR is merely descriptive of
applicant’s “trailers for use with road vehicles” in Application Serial No. 85259332
the examining attorney submitted the following dictionary definitions:
TRACTOR: 1) A vehicle having a powerful gasoline or diesel motor
and usually large, heavily treaded rear tires, used especially for
pulling farm implements or machinery; 2) A truck having a cab and no
body, used for pulling large vehicles such as vans or trailers.6

6 Retrieved from education.yahoo.com/reference/dictionary/entry/tractor attached to Final
Office Action (January 23, 2012).
Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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TRAILER: A large transport vehicle designed to be hauled by a truck
or tractor.7

In addition, she submitted copies of excerpts from third-party websites that
show the word “tractor” used to describe something that pulls or draws, and, in
particular pulls trailers.8
It is the examining attorney’s position that the term TRACTOR describes a
feature or purpose of the goods. Further, she explains that even if applicant’s
trailers are ones that typically would not be pulled by agricultural tractors the
dictionary definition of the word “tractor” has a broader meaning that includes
“road vehicle tractors,” thus, a “trailer for use with road vehicles” may be used with
or pulled by a “tractor.”
Applicant argues that the evidence of record shows that its trailers “are
simply ordinary trailers that one would attach to a regular road vehicle (i.e., a car
or pick-up truck. ... These goods are clearly not intended for use with a commercial
road tractor (i.e., a ‘semi’ or ‘tractor-trailer’) … and no reasonable consumer viewing
these products would make such a connection. … As discussed in the preceding
paragraphs, the determination of whether a term is merely descriptive must be
made in relation to the particular goods or services for which the registration is
sought.” App. Br. p. 19. Further, applicant argues that:

7 Retrieved from education.yahoo.com/reference/dictionary/entry/trailer attached to Denial
of Request for Reconsideration (August 9, 2012).

8 See, e.g., www.agrisupply.com attached to Denial of Request for Reconsideration (August
9, 2012).

Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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Applicant’s customers are predominantly farmers, hobby farmers,
hobby ranchers and rural and suburban homeowners. Accordingly,
these customers are more likely to equate the term ‘tractor’ with its
primary definition – ‘a vehicle having a powerful gasoline or diesel
motor and usually large, heavily treated rear tires used especially for
pulling farm implements or machinery’ – and are more likely to
consider a ‘road vehicle’ to be a standard passenger vehicle. They
would not consider the secondary meaning of tractor to suggest that
Applicant’s tractors could be attached to a ‘semi truck’ or a ‘tractor
trailer. … The examining attorney has narrowly focused on a
secondary definition of ‘tractor’ to suggest that Applicant’s customers
would make an implausible inference that is not by the nature or
context in which Applicant sells the relevant goods. The term ‘tractor’
simply does not describe ‘trailers for use with road vehicles’ and is not
sufficiently related to the actual nature of Applicant’s ‘trailers for use
with road vehicles’ to merit the Examining Attorney’s disclaimer
requirement.

Reply Br. p. 6.
We find that the word “tractor” encompasses “road vehicles” and therefore
the identification “trailers for use with road vehicles” merely describes a feature of
the trailers, namely, that they may be used with or pulled by tractors, i.e., road
vehicles. Abcor, 200 USPQ at 218. In view thereof, the examining attorney has
supported her position and applicant has not rebutted her prima facie case that the
term “tractor” is merely descriptive of applicant’s identified goods and the
disclaimer requirement that includes the word TRACTOR for Application Serial No.
85259332 is appropriate.
In support of her position that SUPPLY CO. is merely descriptive of all of the
goods in Application Serial Nos. 85259332, 85259335 and 85259338, and “metal tool
boxes” in Application Serial No. 85259331 and “stools, furniture” in Application
Serial No. 85259333 she submitted the following dictionary definition:
Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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SUPPLY: materials, provisions, etc. for supplying an army,
expedition, a business, etc.9

The examining attorney also attached several third-party registrations where
the term SUPPLY was disclaimed to demonstrate “that is has been the policy of the
Office to require a disclaimer of the word ‘SUPPLY’ in relation to a wide variety of
goods.”10 E.A. Br. p. 9. The registrations highlighted by the examining attorney
include Reg. No. 3640896 for the mark ALICE SUPPLY CO. for “metal tool boxes”
and Reg. No. 3192351 for the mark REID SUPPLY COMPANY for a variety of
goods in International Class 21; and Reg. No. 4027216 for the mark THE
GOURMET SUPPLY COMPANY for a variety of goods in International Class 21.
In addition, the examining attorney made of record several of applicant’s prior
registrations wherein the term “SUPPLY” or “SUPPLY CO.” has been disclaimed
for “Retail store services in the field of animal care, home improvement, automotive
accessories, maintenance equipment, and lawn and garden products (Reg. No.
30394373); lawn and garden carts (3307885); herbicides and insecticides, lawn and
garden tools (3319816), and grass seeds (3153110).
The examining attorney also attached printouts from third-party websites
“showing common use of the wording ‘SUPPLY’ or ‘SUPPLY CO.’ in relation to a
variety of goods and materials similar to the goods needed by applicant’s
customers.” E. A. Br. p. 14. E.g., Pummell Truck Supply – tool boxes; Gardner’s

9 Webster’s New World College Dictionary (2010) retrieved from www.yourdictionary.com
attached to Office Action (June 7, 2011).

10 Final Office Action (January 18, 2012).

Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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Supply Company - outdoor furniture and yard and garden décor; ASC Agri Supply –
metal tool boxes, goods for home, lawn, garden, livestock and pets, and trailers;
Stanley Supply & Services – metal tool boxes; Orchard Supply Hardware – tool
boxes; Hanes Supply, Inc. – cabinet furniture and tool boxes.11
Finally, the examining attorney points to applicant’s descriptive use of the
term “SUPPLY” on its own website on the “About Us” page:
What Can You Buy at Tractor Supply Co.?

TSC’s products include: clothing, equine and pet supplies,
tractor/trailer parts and accessories, lawn and garden supplies,
sprinkler/irrigation parts, power tools, fencing, welding and pump
supplies, riding mowers and more.12

The examining attorney argues that “[a]pplicant’s goods are materials
provided for their customers, namely, farmers, hobby farmers, hobby ranchers, and
rural or suburban homeowners” and “[a]pplicant’s customers ‘find everything they
need to maintain their farms, ranches, homes and animals’ at Tractor Supply Co.”
E.A. Br. p. 8 citing www.tractorsupply.com/content/abouttsc/aboutusfactsheet. The
examining attorney concludes that:
[T]he word … ‘SUPPLY’ [is] descriptive of a feature or purpose of
applicant’s goods. … Applicant’s goods, namely, metal tool boxes,
trailers for use with road vehicles, stools, furniture, bottle openers, and
compressed pine pellets and wood shaving for use in animal bedding,
are goods and materials provided for the needs of applicant’s
customers including hobby farmers, hobby ranchers, rural and
suburban homeowners.

11 Final Office Action (January 18, 2012); Denial of Request for Reconsideration (August 7,
2012).

12 Denial of Request for Reconsideration (August 7, 2012).

Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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E. A. Br. p. 15.
Applicant argues that the term supply as used in connection with the
identified goods “is so vague and/or broad as to not provide any meaningful
indication of the Goods.”13 App. Br. p. 12. Applicant contends that while the term
“supply” may encompass the goods themselves in a broad and general sense it
“bears no specific relation to” the goods. App. Br. p. 13.
Applicant points to several third-party registrations where the term “supply”
is not disclaimed. However, as the examining attorney explains in “the vast
majority of these third-party registrations the wording is a unitary phrase, slogan
or compressed word mark, and as such, [they] do not require a disclaimer of
individual components.” E.A. Br. p. 12. As shown by the examining attorney’s
evidence, the term “SUPPLY” has been regarded as merely descriptive in a number
of third-party marks, the registrations of which include disclaimers of the term
“SUPPLY.” See General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277
(TTAB 1972) (“Although the registrations are not evidence of use, the registrations
show the sense in which the term ‘fiber’ is employed in the marketplace, similar to a
dictionary definition.”).
With regard to applicant’s other registrations, some include a disclaimer for
“supply” while others do not. However, at best, they present a “mixed bag” and
simply serve to underscore why we are not bound by the prior actions of examining

13 As applicant notes, the dropping of the disclaimer requirement as to the decorative wood
signs and decorative wall plaques made of plastic, wood or metal “suggests that the
examining attorney believes that ‘supply’ is descriptive of useful items, but not decorative
items.” However, for our purposes we make our analysis only as to the goods on appeal, i.e.,
the “useful items.”
Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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attorneys and each case must be decided on its own facts, based on the evidence
that is presented in the record before us. See In re Nett Designs Inc., 226 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Applicant’s reliance on In re Retail Royalty Co., slip op. 77791067 (March 9,
2011) is misplaced. In that case, the Board found that the term “outfitters” was not
merely descriptive of personal care products, fragrances, cosmetics and jewelry.
The record in that case did not have examples of use of the word “outfitters” in
connection with those types of goods, as opposed to the clothing goods in that
applicant’s other applications and registration for which the term “outfitters” was
disclaimed. Here, the record supports a finding that the appealed goods are of the
type that are referred to as “supplies.” Similarly, in In re Sears Brands, LLC, slip
op. 77558337 (December 20, 2010) there was no evidence to connect the term
“service crew” to retail department store services featuring appliances, electronics,
lawn and garden equipment. Finally, In re Hutchinson Technology Inc., 852 F.2d
552, 7 USPQ2d 1490 (Fed. Cir. 1988) is a surname case where the word
“technology” was deemed sufficient to remove the mark in its entirety from being
primarily merely a surname.14 The case was then remanded for entry of the
disclaimer for the word “technology.” Id. at 1492 n. 5.
As to the phrases TRACTOR SUPPLY CO. and SUPPLY CO., the
components in the combinations TRACTOR SUPPLY CO. and SUPPLY CO. retain
their merely descriptive significance in relation to the goods, as such, the

14 The discussion regarding the mere descriptiveness of the term technology centered on the
lack of evidence to support such a finding given the broad nature of the term.
Serial Nos. 85259331; 85259332; 85259333; 85259335; 85259338

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combinations result in a composite that is merely descriptive. In re Oppedahl &
Larson LLP, 71 USPQ2d at 1371.
Based on this record, we find that the examining attorney has demonstrated
that TRACTOR SUPPLY CO. in Application Serial No. 85259332 and SUPPLY CO.
in the remaining applications are merely descriptive of a significant feature of
applicant’s goods, namely, that they are trailers that may be used with tractors and
supplies to maintain prospective customers’ farms, ranches homes and animals.
With regard to Application Serial Nos. 85259331 and 85259333, because SUPPLY
CO. is merely descriptive for some of the goods falling within those identifications
we must hold it to be merely descriptive. In re Stereotaxis Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005). Thus, the disclaimer requirement for
TRACTOR SUPPLY CO. in application Serial No. 85259332 and SUPPLY CO. in all
of the remaining applications is appropriate.
Decision: The refusals to register based on the requirements for a
disclaimer of TRACTOR SUPPLY CO. and SUPPLY CO. are affirmed. However, if
applicant submits the required disclaimers of TRACTOR SUPPLY CO. in
application Serial No. 85259332 and SUPPLY CO. in each of the remaining
applications to the Board within thirty days, this decision will be set aside as to
the affirmance of the disclaimer requirements.15 See Trademark Rule 2.142(g), 37
C.F.R. § 2.142.

15 The standardized printing format for the required disclaimers are as follows: “No claim
is made to the exclusive right to use TRACTOR SUPPLY CO. apart from the mark as
shown.” and “No claim is made to the exclusive right to use SUPPLY CO. apart from the
mark as shown.” TMEP § 1213.08(a).