Truck-Lite Co., Inc.

Trademark Trial and Appeal Board

Jan 26, 2006

No. 76532510 (T.T.A.B. Jan. 26, 2006)

Hearing: Mailed: January 26, 2006
October 27, 2005 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Truck-Lite Co., Inc.
________

Serial No. 76532510
_______

Byron A. Bilicki of The Bilicki Law Firm, P.C. for Truck-
Lite Co., Inc.

Richard F. White, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Truck-Lite Co., Inc. has filed an application to
register the mark SUPER (in standard character form) for:
lighting products for vehicles, namely,
headlights; tail lights; marker lights; clearance
lights; identification lights; stop lights; turn
lights; lighting kits comprised of lamps,
grommets, plugs, and flanges; license plate
lights; back-up lights; interior and utility
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76532510
2
lights; snow plow lights; fog and driving lights;
daytime running lights; and flashing lights.1

Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant’s goods,
the mark SUPER is merely descriptive of them.
Applicant has appealed. Briefs have been filed, and
an oral hearing was held.
Applicant argues that the mark is at most suggestive,
and does not convey, with any degree of particularity an
immediate idea or characteristic about the goods.
Applicant asserts that the word “super” has multiple
definitions. Applicant states that the term is not
normally associated with lighting products for vehicles,
and that others in the field neither have used the term nor
have a competitive need to use the term in connection with
similar goods.
The examining attorney maintains that the mark SUPER
merely describes that applicant’s vehicle lighting products
“are of higher quality or are superior to similar products
on the market.” (Brief, p. 3.) The examining attorney
relies upon a dictionary definition of the word “super.”

1 Serial No. 76532510, filed on July 28, 2003, which alleges a
bona fide intention to use the mark in commerce.
Ser No. 76532510
3
Also offered in the support of the refusal are third-party
registrations for marks that include the term SUPER. These
registrations contain a disclaimer of SUPER, or have been
registered only on the Supplemental Register, or on the
Principal Register upon a showing of acquired
distinctiveness.
The examining attorney is not persuaded by the fact
that the term “super” has several meanings given that the
determination of mere descriptiveness must be made on the
basis of the term’s meaning when applied to the specified
goods listed in the application.
The term “super” is defined as, inter alia, “[a]n
article or a product of superior size, quality, or grade.
The American Heritage Dictionary of the English Language
(Third edition 1992). The examining attorney relies on
this definition in arguing that the mark will convey to
consumers that applicant’s lighting products are of higher
quality or are superior to similar vehicle lighting
products on the market.
It is well settled that a mark is considered to be
merely descriptive of the goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
Ser No. 76532510
4
information regarding the nature, function, purpose or use
of the goods or services. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not
necessary that a mark 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 mark describes a significant attribute or
idea about them. Moreover, whether a mark 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 those goods or services and the possible
significance that the mark 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 (TTAB
1979).
On the other hand, a mark is suggestive if, when the
goods or services are encountered under the mark, a
multistage reasoning process, or imagination, thought or
perception, is required in order to determine what
attribute of the goods or services the mark indicates. See
In re Abcor Development Corp., supra at 218. To the extent
that there is any doubt in drawing the line of demarcation
between a suggestive mark and a merely descriptive mark,
Ser No. 76532510
5
such doubt is resolved in applicant’s favor. In re Atavio,
25 USPQ 1361 (TTAB 1992).
In urging reversal of the refusal to register,
applicant relies heavily on In re Ralston Purina Co., 191
USPQ 237, 238 (TTAB 1976) in which the term SUPER in the
mark RALSTON SUPER SLUSH (SLUSH disclaimed) was held
suggestive of a “concentrate to make a slush type soft
drink” since the term “is used as mere puffery … to connote
a vague desirable characteristic or quality;” and In re
Occidental Petroleum Corp., 167 USPQ 128 (TTAB 1970) in
which the Board held that SUPER IRON suggestive of “soil
supplements” since “it takes some roundabout reasoning to
make a determination … that the product contains a larger
amount of iron than most soil supplements or that this iron
… ingredient … is superior in quality to iron found in
other soil supplements.”
The examining attorney relies on In re U.S. Steel
Corp., 225 USPQ 750, 751 (TTAB 1985) in which the Board
held SUPEROPE merely descriptive of wire rope “since
combination of the word ‘SUPER’ with the apt descriptive
term ‘ROPE’ results in a term which would be perceived as
nothing more than the name of the goods modified by a
laudatory adjective indicating the superior quality of
appellant’s wire rope”; and In re General Tire & Rubber
Ser No. 76532510
6
Co., 194 USPQ 491, 495 (TTAB 1977) in which the Board held
SUPER STEEL RADIAL merely descriptive of tires since the
term conveys “one or both of two ideas”; the first is that
“the goods are superior grade steel radial tires” and the
second is that the goods are “large size steel radial
tires.”
What we distill from the cases relied on by applicant
and the examining attorney, as well as other Board
decisions, is that, in general, if the word “super” in a
mark is combined with the generic name of the goods, or if
the goods come in various grades or sizes, then the mark is
merely descriptive rather than suggestive.
In this case, the mark sought to be registered is
simply SUPER; it is not combined with the generic name of
the goods. Moreover, there is no evidence of record to
suggest that lighting products for vehicles come in various
sizes or grades, or that “super” has been used as a
descriptive designator for vehicle lighting products.
We find that the mark SUPER, when applied to
applicant’s goods, is suggestive and not merely
descriptive. There is a certain ambiguity about the mark
and no information about any quality or characteristic of
the goods is conveyed with a degree of particularity. Some
thought or imagination would be required on the part of
Ser No. 76532510
7
prospective purchasers in order to perceive any
significance of the mark as it relates to applicant’s
goods.
Although we have considered, of course, the third-
party registrations introduced by the examining attorney,
we are not persuaded to reach a different result in this
appeal. We readily concede that they tend to show that in
the past the Trademark Examining Operation has viewed the
term “super” to be merely descriptive for certain goods and
services. However, we note that that none of the third-
party registrations cover goods of the type involved in
this appeal. Furthermore, while uniform treatment under
the Trademark Act is an administrative goal, our task in
this appeal is to determine whether this particular
applicant’s mark is registrable on the Principal Register.
As the Board has often stated, each case must be decided on
its own facts, and we are not privy to the file records of
the registrations submitted by the examining attorney.
Finally, to the extent that there is any doubt in this
case, we have resolved that doubt in applicant’s favor so
as to permit publication of the mark. In re Atavio, supra.
Decision: The refusal to register is reversed.