Wellman Products Group Inc.

Trademark Trial and Appeal Board

Jun 6, 2007

No. 76644135 (T.T.A.B. Jun. 6, 2007)

Mailed:
June 6, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wellman Products Group Inc.
________

Serial No. 76644135
_______

Gary L. Jones of Kohrman Jackson & Krantz PLL for Wellman
Products Group Inc.

Elissa Garber Kon, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Bucher, Holtzman and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Wellman Products Group Inc. seeks registration on the
Principal Register of the mark RACE PROVEN STREET LEGAL for
goods identified in the application as follows:
“Brake blocks for land vehicles; brake
hardware for vehicles; brake linings for
land vehicles; brake pads for land vehicles;
brake rotors for land vehicles; brake shoes
for land vehicles; disc brake pads for
vehicles” in International Class 12.1

1 Application Serial No. 76644135 was filed on August 3, 2005
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as October 15, 2003.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76644135
- 2 -
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the
Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
identified goods, i.e., that the term “race proven street
legal” immediately informs potential purchasers about the
nature and quality of applicant’s goods.
Applicant and the Trademark Examining Attorney have
briefed the issues involved in this appeal. We affirm the
refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of a significant
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services with which it is
used or is intended to be used. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)
[GASBADGE merely descriptive of a “gas monitoring badge”].
See also In re MBNA America Bank N. A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and
PHILADELPHIA CARD merely descriptive of “credit card
Serial No. 76644135
- 3 -
services.” The Court found that a “mark is merely
descriptive if the ultimate consumers immediately associate
it with a quality or characteristic of the product or
service.”]. Hence, the ultimate question before us is
whether the term RACE PROVEN STREET LEGAL conveys
information about a significant feature or characteristic
of applicant’s goods with the immediacy and particularity
required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987) [APPLE PIE merely descriptive of potpourri
mixture: “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
Serial No. 76644135
- 4 -
we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can
guess what applicant’s goods are after seeing applicant’s
mark alone. In re Abcor, supra at 218 [“Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”]; In re Home Builders Association of
Greenville, 18 USPQ2d 1313
(TTAB 1990) [NEW HOME BUYER’S
GUIDE merely descriptive of “real estate advertisement
services”]; and In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985) [APRICOT is merely descriptive of
apricot-scented dolls]. Rather, the proper test in
determining whether a term is merely descriptive is to
consider the applied-for mark in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the significance that the mark
is likely to have on the average purchaser encountering the
goods or services in the marketplace. See In re Omaha
Serial No. 76644135
- 5 -
National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987)
[the term “first tier”

describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs
for controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991) [MULTI-VIS is merely descriptive of “multiple
viscosity motor oil”]; In re Engineering Systems Corp.,
2 USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely descriptive
of computer graphics programs]; and In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS merely
descriptive of a coaster suitable for direct mailing].
In arguing for registrability, applicant contends that
its mark is suggestive at worst, if not even arbitrary;
that it is incongruous and susceptible to multiple
connotations; and that it requires a great deal of
imagination in order for the relevant public to perceive
any significance of the words of the mark, taken as a
whole, as it relates to the applicant’s goods.
By contrast, the Trademark Examining Attorney contends
that the applied-for mark immediately tells consumers that
Serial No. 76644135
- 6 -
its vehicle braking components are of a high quality, that
they have been “race proven” and yet they are still “street
legal.”
The term “Race Proven”
The Trademark Examining Attorney has included in the
record a number of third-party websites demonstrating that
the term “race proven” is a term of art used in a variety
of vehicle-racing industries. She argues that this term
informs consumers that the involved vehicle parts are of
extremely high quality precisely because their
effectiveness has been “proven” under demanding racing
conditions. The record contains several sample websites
that show others in the industry using this phrase to
convey this same, laudatory meaning in connection with
their vehicle parts. For example, the following sites
involve the promotion of vehicle brakes and related goods
[emphasis supplied by the Trademark Examining Attorney]:
-- Track tested and race proven, Lyndall Racing
Brakes offers a uniquely engineered
Carbon/Kevlar brake pad which excels at
virtually all applications. Use it on the
street, in the canyons, and on the track!
(excerpted from www.lyndallracingbrakes.com) .
-- Why buy from Precision Brakes Company? High
quality workmanship, our performance guarantee,
Serial No. 76644135
- 7 -
race proven engineering….(excerpted from
www.precisionbrakescompany.com)
-- Serious driving requires serious braking,
which is why this kit is the perfect upgrade for
those seeking the highest level of performance
from their WRX …. Massive, race-proven billet
aluminum 6 piston Superlite calipers are matched
to vented, drilled and slotted 12.90 inch rotors
in the front. (excerpted from www.kartek.com)
-- Race proven brake technology adapted for the
street-slotted and cross-drilled replacement
rotors (excerpted from www.stylinconcepts.com)
-- The 200SL brakes have also been race-proven
by pro teams like Shaklee and the LA Sheriffs
and many top pro triathletes. (excerpted from
www.canecreek.com)
-- CASTROL SRF Racing Brake Fluid: Race Proven
– Ultimate Racing Brake Fluid. Castrol SRF
Racing Brake Fluid is an ultra high performance
product formulated specifically to satisfy the
ever increasing stresses placed upon the braking
systems used in international motorsport.
(excerpted from www.hrpworld.com)
-- Proven Race Chassis. The Mustang GT-R
[automobile] benefits from the 2005 Mustang’s
race-inspired chassis, developed and tuned by
engineers with Ford Racing engineering
experience or a passion for weekend track
time …. The race–proven dampers are coil-over,
fully adjustable units … Rounding out the
chassis package are huge, race-proven Brembo
brakes. (excerpted from www.fordmuscle.com)

We conclude from these excerpts that the two-word term
“Race Proven” immediately conveys information about braking
components across a wide spectrum of vehicles, as the above
examples includes motorcycles, trucks, SUV’s, automobiles
and bicycles.
Serial No. 76644135
- 8 -
Moreover, as noted by the Trademark Examining
Attorney, applicant even uses a variation on this wording
in a descriptive sense in its own specimen:
-- Hawks Performance’s leading-edge brake
friction technology is proven everyday in
severe-duty aerospace, military, commercial
truck fleet, motorsports and performance
“street” brake applications. [Trademark
Examining Attorney’s appeal brief,
unnumbered p. 5, [emphasis supplied by the
Trademark Examining Attorney].

Accordingly, we find that the term “Race Proven” alone
is merely descriptive of the identified goods.
The term “Street Legal”
The Trademark Examining Attorney has included in the
record a number of third-party websites demonstrating that
the term “Street Legal” is widely used in the automotive
industry “to indicate that certain vehicles may contain
high performance parts, but are still legal to drive on the
street, as opposed to only on racetracks.” Id. at
unnumbered p. 5 The record contains numerous examples of
such descriptive use drawn from a variety of websites
[emphasis supplied by the Trademark Examining Attorney]:
-- Hawk’s ceramic pads are the greatest way
to control that horrible brake dust while
improving your braking performance at the
same time. High performance street brake
pads are world renowned for increasing
Serial No. 76644135
- 9 -
stopping power on street-legal cars, trucks
and SUV’s. (excerpted from
www.pitstopautoparts.com, discussing the
applicant’s products)
-- High Performance Street disc brake pads
are world renowned for increasing stopping
power on your street legal vehicle.
(excerpted from www.modacar.com)
-- Street legal brake lines [followed by a
long list of the car brands served by the
site] (excerpted from
www.russellperformance.com/auto/brake)
-- Subsequently, Brembo brakes have crossed
over to street legal vehicles …. This list
is a who’s who of street legal rockets.
Clearly, a large number of high performance
automakers seek the stopping power that
aided so many championship-racing teams.
(excerpted from www.findarticles.com)
-- It is the most comfortable medium
friction sport compound. The sport pad is
street legal, rotor friendly and DE on
various Ferraris and Corvettes [discussing a
brand of brake pads]. (excerpted from
www.importrp.com)
-- Our bike motors are street legal and
offer over 200 MPG at 25 MPH. (excerpted
from www.bikemotor.com)
-- For the record, the world’s fastest
street legal car is not the McLaren F1, it’s
the 1988 Twin Turbo Callaway Sledgehammer
Corvette. (excerpted from
http://hypertextbook.com/facts)
-- Exhaust: Must be routed through street
legal mufflers …. Tires: Approved racing
slicks are permitted, as well as street
legal DOT approved treaded tires [discussing
rules for street legal drag way racing]
(excerpted from www.californiaspeedway.com)

Serial No. 76644135
- 10 -
The Trademark Examining Attorney has also referred to
third-party trademark registrations2 wherein this involved
term was registered consistent with the provisions of
Section 2(f) of the Act.
STREET LEGAL MC for “association services,
namely, promoting the
interests of those who ride
motorcycles” in
International Class 35;3 and
STREET LEGAL MOTORCYCLE
CLUB
for “association services,
namely, promoting the
interests of lawyers and law
professionals who ride
motorcycles” in
International Class 42;4

In spite of this evidence, applicant argues as
follows:
Applicant would defy anyone to provide an
example of how the words “race proven street
legal”, taken together or alone, would
directly conjure the image of vehicle brakes

2 Registrations placed into the record by the Trademark
Examining Attorney where this term was disclaimed, or where the
mark containing this term was registered on the Supplemental
Register, have all been cancelled under Section 8 of the Act.
3 Registration No. 2755533 issued on August 26, 2003 based
upon an application filed on June 6, 2002 claiming first use
anywhere and first use in commerce at least as early as May 27,
1993. No claim is made to the term “MC” apart from the mark as
shown. The entire mark was registered under the provisions of
Section 2(f) of the Act.
4 Registration No. 2439831 issued on April 3, 2001 based upon
an application filed on July 28, 1998 claiming first use anywhere
and first use in commerce at least as early as April 7, 1993. No
claim is made to the term “Motorcycle Club” apart from the mark
as shown. The entire mark was registered under the provisions of
Section 2(f) of the Act.
Serial No. 76644135
- 11 -
in anyone’s mind, no matter how
sophisticated or unsophisticated.

Applicant’s brief, p. 2. Applicant then proceeds to show
how the term “Street Legal” has been registered for a wide
variety of goods, including clothing (Registration No.
1509338) and hockey equipment (Registration No. 2705424).
However, there are several problems with this
argument. First, contrary to applicant’s suggestion, and
as seen above, the test under Section 2(e)(1) of the Act is
not whether prospective purchasers can guess what
applicant’s goods are after seeing applicant’s mark alone.
The question is whether the phrase immediately conveys
information when considered in connection with the named
goods.
Secondly, while these particular usages of the term
“Street Legal” (e.g., applied to clothing or hockey gear)
may be arbitrary, that is clearly not the case with braking
components for high-performance land vehicles.
Accordingly, we also find that the term “Street Legal”
alone is merely descriptive of the identified goods.
The combined term, “Race Proven Street Legal”
Finally, applicant argues that the Trademark Examining
Attorney has “totally ignoring the fact that the use and
Serial No. 76644135
- 12 -
meaning of these words, whether taken alone or together, is
incongruous and distinctive,” Id., citing to cases such as
The Institut National des Appellations D'Origine v.
Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d
1190 (Fed. Cir. 1992) [CHABLIS WITH A TWIST may well project
a double meaning, e.g., the unusual approach of adding a
citrus flavoring to wine]; In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) [the term SUGAR & SPICE
held not to be merely descriptive of bakery products]; and
In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983) [SNO-RAKE is
not merely descriptive of a snow removal hand tool, the
head of which is solid uninterrupted construction without
prongs].
Applicant appears to be arguing that the significance
of its allegedly incongruous combination would not be
grasped without some measure of imagination and “mental
pause” in citing to In re Shutts, supra at 364-365. In
addition, applicant argues that the Trademark Examining
Attorney has failed to establish the descriptiveness of the
combined term, “race proven street legal,” while applicant
asserts it has shown that this phrase is not a term of art
in the vehicle parts industry. Applicant contends that
inasmuch as the term “race proven street legal” does not
Serial No. 76644135
- 13 -
have an obvious meaning in relation to its goods, the fact
that no third party has used this combination further
corroborates applicant’s contention that the mark is not
merely descriptive.
However, the fact that applicant may be the first and
only user of a descriptive designation does not justify
registration if the only significance conveyed by the term
is merely descriptive. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983) [SHOOTING,
HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE is descriptive
for conducting and arranging trade shows in hunting,
shooting, and outdoor sports products field]. Similarly,
the failure of the Trademark Examining Attorney to uncover
examples of that specific combination (“race proven street
legal”) does not detract from the fact that these four
words when placed together – combining two separate two-
word terms – would be perceived as merely descriptive by
those in the vehicle component industry when used in
connection with braking components.
Furthermore, we recognize that to the extent any mark
creates another meaning (e.g., a double entendre) as
applied to the goods or services, the mark comprising the
incongruity or double entendre will not be refused
Serial No. 76644135
- 14 -
registration as merely descriptive if one of its meanings
is not merely descriptive in relation to the goods or
services. For example, in the oft-cited decision of the
predecessor to our principal reviewing court, In re
Colonial Stores Inc., supra, the Court found this matter
clearly functioned as a trademark because “sugar and spice”
is a well-known phrase taken from a nursery rhyme. The
composite mark is inherently distinctive as applied to
bakery products containing these two ingredients, precisely
because this combination from the nursery rhyme is familiar
to anyone seeing or hearing this mark. Applicant has not
explained how its mark creates such a double meaning.
Hence, we find the instant mark is not analogous to marks
such as CHABLIS WITH A TWIST, SUGAR & SPICE or SNO-RAKE.
Rather, we find that when these two descriptive terms
are combined into “race proven street legal,” the separate
meanings of the two individual components are not lost. In
fact, to the contrary, this phrase contains two
complementary pieces of information – namely, applicant’s
touting the fact that its customers can get for one’s
street vehicle the same quality of materials and brake pad
technologies originally designed for motor sports race
track usage. This combination fails to create another
Serial No. 76644135
- 15 -
meaning that might render the combination registrable as a
mark.
Accordingly, we find that when these two merely
descriptive terms are combined into “Race Proven Street
Legal,” the overall phrase continues to be merely
descriptive of these goods.
Decision: We find the arguments of the Trademark
Examining Attorney to be most convincing, and hence, her
refusal to register this mark on the Principal Register
based upon Section 2(e)(1) of the Lanham Act is hereby
affirmed.