Wheeler Mfg. Co., Inc.

Trademark Trial and Appeal Board

Feb 23, 2001

No. 75566038 (T.T.A.B. Feb. 23, 2001)

2/23/01
Paper No. 9
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wheeler Manufacturing Co., Inc.
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Serial No. 75/566,038
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George W. Lewis of Jacobson, Price, Holman & Stern, PLLC
for Wheeler Manufacturing Co., Inc.
William H. Dawe, III, Trademark Examining Attorney1, Law
Office 108 (David Shallant, Managing Attorney).
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Before Wendel, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Wheeler Manufacturing Co., Inc. has filed an
application to register the term COPPER-PURE as a trademark
for "jewelry made in whole or in substantial part of
copper".2
1 Mr. Dawe assumed responsibility for the appeal, after refusal
of registration had been made final by Examining Attorney
Catherine K. Krebs.
2 Ser. No. 75/566,038, filed on October 7, 1998, which alleges
applicant has a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/566038
2
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 term COPPER-PURE will be merely descriptive of such
goods.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal
to register on the ground of mere descriptiveness.
It is well settled that a term is considered to be
merely descriptive of 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 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, 217-18 (CCPA 1978). It is not necessary that a term
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 term
describes a significant attribute or aspect about them.
Moreover, 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 or is to be used in connection
Ser. No. 75/566038
3
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. See In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Consequently, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark
alone is not the test." In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985).
Applicant acknowledges the dictionary definitions of
record for "copper" and "pure," and concedes that these
terms individually "may be descriptive." Nonetheless,
applicant rejects the Examining Attorney's argument that
the particular juxtaposition of the terms does not create a
non-descriptive composite and, in doing so, apparently
relies in large part on applicant's use of a hyphen, for
applicant concedes that the Examining Attorney's argument
"might be tenable if the mark were COPPER PURE…."
Applicant also argues that the combination COPPER-PURE is
not descriptive "because the individual terms do not exist
in the hyphenated mark." Applicant concludes that "COPPER-
PURE is arbitrary and fanciful."
We disagree with applicant's assessment. When merely
descriptive terms are combined, "the key issue is whether
the combination invokes a new and unique commercial
Ser. No. 75/566038
4
impression." In re Uniroyal, Inc., 215 USPQ 716, 718 (TTAB
1982) ("We find nothing here to indicate that the term
"STEELGLAS" means anything to consumers other than a
combination of "steel" and "glass".). Accord, In re
Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) ("While
applicant is correct that a non-descriptive trademark may
be fashioned from the incongruous combination of several
words that are, individually, merely descriptive of an
applicant's goods, we fail to see anything incongruous in
the combination of the words "SCREEN FAX PHONE."). See
also, In re Quik-Print Copy Shop, Inc., 205 USPQ 505, 507
(CCPA 1980) (Court rejected appellant's argument that
combination of "mundane words" "quick" and "print" created
fanciful and distinctive term.").
Applicant's reliance on decisions finding SUGAR &
SPICE and SWEETARTS non-descriptive is misplaced. Unlike
those marks, applicant's combination of terms results in no
incongruity. Also, we agree with the Examining Attorney's
conclusion that the transposition of "pure copper" and use
of a hyphen between the transposed terms does not aid
applicant. See In re Away Chemical Corp., 217 USPQ 275,
276 (TTAB 1982) ("the transposition of 'tablets for pans'
to 'pan-tablets'" is insufficient to overcome "basic
descriptive cast" of the involved mark); and In re
Ser. No. 75/566038
5
Dairimetrics, Ltd., 169 USPQ 572, 573 (TTAB 1971) (ROSE
MILK, though not found in any dictionaries, is synonymous
in meaning to "recognized descriptive name" "Milk of Roses"
for a rose scented cosmetic preparation).
In short, we see nothing in either the combination of
the terms "copper" and "pure," or in their ordering in the
form COPPER-PURE, that would lead consumers to think of the
designation as anything other than an indicator that
applicant's goods are completely or substantially pure
copper.
Decision: The refusal of registration is affirmed.