True Value Company

Trademark Trial and Appeal Board

Sep 29, 2008

No. 78840966 (T.T.A.B. Sep. 29, 2008)

Oral Hearing: July 22, 2008 Mailed: September 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re True Value Company
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Serial No. 78840966
Serial No. 78840980
_______

Christopher J. Schulte, of Merchant & Gould P.C., for True
Value Company.

Katy Halmen, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).1
_______

Before Rogers, Walsh and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

True Value Company, applicant herein, filed two
applications seeking to register ”MASTER ELECTRICIAN” on
the Principal Register for goods identified as follows:
1. “Electric power strips; extension cords and
electrical wires; timers; wiring devices, namely,
reels for electric wire, wire diameter measuring
devices; electric light dimmers; audio, video and

1 Examining attorney Richard White presented the oral argument
for the Office.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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2
telephone accessories, namely interface circuits
for video cameras, video circuit boards;
electrical power supplies; antennae and
accessories, namely, antenna parameter measuring
apparatus and electronic combiners for connecting
antennas and receivers,” in International Class
9.2

2. a) “Cord storage, namely, non-metal
electrical cord reels,” in International Class 9.

b) “Lighting fixtures, namely, under cabinet
and fluorescent lighting; lamp parts, namely,
lamp shades, lamp bases, chimneys for oil lamps,
filaments for electric lamps, lamp reflectors;
portable task lights, namely, pen lights,
flashlights; lighting fixtures, namely, work
lights and security lighting,” in International
Class 11.3

The trademark examining attorney issued a final
refusal in both applications on the ground that the mark is
merely descriptive of the identified goods. Trademark Act
Section 2(e)(1), 15 U.S.C. §1052(e)(1). Applicant appealed
the final refusals. Both applicant and the examining
attorney filed briefs. Applicant and the examining
attorney took part in an oral hearing in these cases on
July 22, 2008. The Board scheduled these two cases along
with several of applicant’s pending ex parte appeals that
contain the term “MASTER” in the marks for a single

2 Serial No. 78840966, filed on March 20, 2006, based on Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona
fide intent to use the mark in commerce.
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hearing. In this decision, we have limited our focus to
the two ex parte appeals in which applicant seeks to
register the mark “MASTER ELECTRICIAN.” These two appeals
involve common questions of law and fact, and are
appropriate for consolidation. Upon careful consideration
of the evidence of record and the arguments of counsel, we
reverse the refusal to register in both applications.
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. 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). 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; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973).

3 Serial No. 78840980, filed on March 20, 2006, based on Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona
fide intent to use the mark in commerce.
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4
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 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. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, 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).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the
other hand, if a mark requires imagination, thought, and
perception to arrive at the qualities or characteristics of
the goods or services, then the mark is suggestive. In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003).
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We consider a composite mark in its entirety. The
composite is registrable even if its individual terms are
descriptive, so long as the unitary mark has a separate,
non-descriptive meaning. In re Colonial Stores, Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR & SPICE
not merely descriptive of bakery products). Thus we
consider whether the words “MASTER ELECTRICIAN” have a
descriptive meaning as a unitary phrase. The examining
attorney argues that the term “MASTER ELECTRICIAN” merely
describes “a particular consumer group” with “a particular
license and high level of skill and knowledge in the field
of electrical work.” The examining attorney further
submitted evidence to show that master electricians use the
goods set forth in the recitals of these two applications.
A sampling of the examining attorney’s evidence includes
the following excerpts:
“The second method I mentioned was to have the
generator installed by a master electrician. The
electrician can wire the generator into house circuits in a
way that – as John mentions – automatically switches the
circuitry so that the generator power travels in household
circuits but is blocked from leaving the house, where it
can do damage.”4

“Our team of Master Electricians is trained and
equipped to provide superior service that will meet or
exceed the National Electrical Code . . . We provide the

4 Evidence submitted by the examining attorney in the final
office action in Application No. 78840966, citing The Atlanta
Journal-Constitution, October 31, 2004.
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following electrical services: . . . 240 wiring for dryers,
ranges and air conditioners; new circuit wiring and
outlets; computer wiring . . . custom lighting
controls/dimmers . . . Telephone and Cable Repairs . . .
Home Theaters.”5

“Call our experts for lighting installation and
specialty wiring needs. Electric Services; Recessed
Lighting . . . Outdoor Lighting . . . Custom Lighting
Designs . . . From residential work on older homes to
remodels or service, we do it all. No job is too big or
too small for our master electricians.”6

To support her argument that applicant’s “MASTER
ELECTRICIAN” mark is merely descriptive of the identified
goods in the two applications, the examining attorney cites
In re Camel Manufacturing Co., Inc., 222 USPQ 1031 (TTAB
1984). The Board in that case held the mark “MOUNTAIN
CAMPER” to be merely descriptive under Section 2(e)(1) of
“retail and mail order services in the field of outdoor
equipment and apparel.” However, the Board did not base
its decision in that case merely on the existence of
“mountain campers” as a possible class of consumer of
applicant’s goods. Rather, the Board clearly noted that
“we embrace the holding that a mark is merely descriptive
if it describes the type of individuals to whom an

5 Evidence submitted by the examining attorney in the denial of
request for reconsideration in Application No. 78840966, citing
Internet printout from www.lehighvalleyelectric.com.
6 Evidence submitted by the examining attorney in the denial of
request for reconsideration in Application No. 78840980, citing
Internet printout from www.johnnyelectric.com.
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appreciable number or all of a party’s goods or services
are directed.” Id.
Applicant has shown that not to be the case here.
Applicant has pointed to numerous articles that tout
applicant’s goods as being targeted to “do-it-yourself”
homeowners. A sampling of applicant’s evidence includes
the following excerpts:
“In 1994, Bryant became the general manager of the
True Value Home Center, a True Value operation opened by
his family to better serve the needs of do-it-yourself
homeowners.” Sierra Star July 21, 2006.

“After listening to customer focus groups for months,
True Value is targeting not bargain-hunters or advice-
seekers but the ‘do-it-yourself’ enthusiasts who already
account for an estimated 43 percent of its sales.”
Associated Press Online March 27, 2006.

“ei software Inc. works with a variety of home-
improvement suppliers – Pittsburgh Paints, Raynor Garage
Doors, True Value Co. – to provide visualization tools for
the do-it-yourself type.” Newsday March 30, 2006.

“Products, tools, and DIY sheets are at Mitre 10, True
Value, Stratco, Home Depot . . .” Nationwide News Pty.
Limited June 20, 2004.

“Its products are sold in 20,000 retail locations
nationwide, including Home Depot, Lowes, True Value, and
Ace Hardware. ‘They’re mostly DIY products,’ Broderick
said, ‘and 85 percent of what we distribute goes home in
DIYer’s cars.’” National Home Center News October 8, 2001.

“I was referred by the local True Value Hardware, a do-it-
yourself gold mine in its own right.” The Seattle Times
August 8, 1999.

Accordingly, applicant argues that the term “MASTER
ELECTRICIAN” does not describe applicant’s intended
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consumers, or at least not “an appreciable number” of them
as required by the Board in In re Camel Manufacturing Co.,
Inc., supra, 222 USPQ 1031. Rather, applicant argues, the
mark is suggestive of the professional quality that a do-
it-yourself homeowner can obtain from applicant’s products.
Applicant relies on several prior Board rulings that
distinguish between goods targeted to professionals, and
goods targeted to a general consumer who wishes to have
professional-style results. See In re Chesebrough-Pond’s
Inc., 163 USPQ 244 (TTAB 1969). The Board in Chesebrough-
Pond’s reversed the examining attorney’s requirement of a
disclaimer of the term “MANICURIST” in the mark “MANICURIST
BY CUTEX” for “nail polish.” As the Board explained,
finding the nail polish in its typical channels of trade,
consumers would not expect that the product is intended
only for professional manicurists. Rather, they would hope
that by using the product they may obtain a professional
result. Id. The same conclusion was reached in the non-
citable case relied upon by applicant, In re Omega
Research, Inc., Serial No. 74/546,080 (TTAB 1997).7 There,
the Board reversed a 2(e)(1) refusal to register the mark

7 We do not base our decision in these cases on this non-citable
case, but discuss it merely as an example of similar Board
rulings and because applicant has relied on it in briefing these
cases.
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“WALL STREET ANALYST” for “computer software to assist in
making investment decisions.” The Board reasoned that
while a professional “wall street analyst” could use the
applicant’s product, it was intended for do-it-yourself
investors who wished for professional results.
Accordingly, as in Chesebrough-Pond’s, the mark in Omega
was held not “merely descriptive” but suggestive.
The examining attorney argues that Omega Research is
not analogous to the present case, asserting that the
examining attorney there, unlike here, had failed to
demonstrate a nexus between the user identified in the mark
and the services identified in the application. It is true
that the examining attorney here has provided ample
evidence of the existence of a group of possible consumers
known as “master electricians,” and of the possibility that
they may use applicant’s identified goods. However, as in
Chesebrough-Pond’s, that is not the critical point in these
cases. The question, rather, is whether an “appreciable
number or all” of applicant’s goods are directed towards
master electricians. See In re Camel Manufacturing Co.,
Inc., supra, 222 USPQ 1031. Applicant has submitted
probative evidence that they are not. Furthermore, there
is nothing in the identifications of goods in these
applications which limits the class of consumers to master
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electricians, nor is there anything inherent in the nature
of the listed items which would limit their use to master
electricians. Rather, the goods appear to be goods which
“do-it yourselfers” or others who are not master
electricians could and would purchase. These potential
purchasers would likely constitute the overwhelming
majority of purchasers, and these purchasers would likely
perceive the suggestive meaning of the mark posited by
applicant.
Furthermore, we note that unlike a Section 2(d)
analysis, any doubts regarding the application of Section
2(e)(1) are to be resolved in favor of the applicant. In
re Conductive Services, Inc., 220 USPQ 84, 86 (TTAB 1983)
(observing, “[w]e recognize that the suggestive/descriptive
dichotomy can require the drawing of fine lines and often
involves a good measure of subjective judgment.”).
Accordingly, we find that applicant’s “MASTER ELECTRICIAN”
mark is suggestive, and we reverse the Section 2(e)(1)
refusals of these two applications.

Decision: We reverse the refusals to register in
Application Nos. 78840966 and 78840980.