Cemco, Inc.

Trademark Trial and Appeal BoardJul 2, 2010

No. 77432339 (T.T.A.B. Jul. 2, 2010)

Oral Hearing: Mailed: May 4, 2010 July 2, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Cemco, Inc. ________ Serial No. 77432339 _______ Theodore A. Breiner of Breiner & Breiner, L.L.C. for Cemco, Inc. Jeri Fickes, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Seeherman, Hairston and Kuhlke, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: On March 26, 2008, Cemco, Inc, applicant, filed an application to register the mark KOOLER KIOSK in standard characters on the Principal Register for “water cooler attachment for storing, holding and displaying articles” in International Class 20. The application is based on an allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B Serial No. 77432339 2 The examining attorney has refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s mark is merely descriptive of its goods or, in the alternative, is deceptively misdescriptive of the goods. After the examining attorney made the refusal final, applicant requested reconsideration and filed this appeal. On August 25, 2009, the examining attorney denied the request for reconsideration and the appeal was resumed. Both applicant and the examining attorney have filed briefs and an oral hearing was held on May 4, 2010. We reverse the refusal to register. As a preliminary matter, the examining attorney’s objection to applicant’s “reference [in it’s brief]...to new third-party registrations not properly made of record” is overruled. Although she does not specify which third- party registrations are new, all of them were part of the record except for those pertaining to Board cases cited by applicant. Reference to third-party marks that were the subject of a Board case is simply part of applicant’s legal argument. We now turn to consider the refusal under Section 2(e)(1). “A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients Serial No. 77432339 3 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). “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.’” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987) citing In re Qwik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). See also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). 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, supra. However, a mark comprising a combination of merely descriptive Serial No. 77432339 4 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. 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 Section 1209.03(d). The test for deceptive misdescriptiveness has two parts. First it must be determined if the matter sought to be registered misdescribes the goods or services. If so, then it must be ascertained if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). See also In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002). It is the examining attorney’s position that “[g]iven applicant’s broad identification of the purpose of the water cooler attachments, the proposed mark appears to merely describe the use and function of the goods as a kiosk for coolers [and] if the cooler attachments will not in fact be designed to operate as kiosks, the proposed mark deceptively misdescribes the goods.” Br. p. 6. Specifically, she argues that “[t]he term ‘KOOLER’ in applicant’s mark directly identifies the items applicant’s goods are designed to be attached to. The goods are Serial No. 77432339 5 expressly identified by applicant as ‘water cooler attachments.’” Br. p. 9. As to the word “KIOSK,” the examining attorney argues that it “describes the role of the goods.” Br. p. 10. In support of her position, she points to the following definitions of the word kiosk: a small structure, often open on one or more sides, used as a newsstand or booth; and a cylindrical structure in which advertisements are posted www.thefreedictionary.com a small, freestanding structure traditionally used for the posting of temporary signs and notices www.scottparagon.com In addition, she submitted examples from the Internet of the word “kiosk” being used to describe a small structure used to house information and notices. In the example from the Florida State University web page the locations of “posting kiosks” are displayed on a map and various rules for posting are provided, e.g., “Only FSU entities may post flyers or materials on the outdoor boards.” http://posting.fsu.edu. She also submitted the following pictures of fixed or mobile structures that are referred to as kiosks: Serial No. 77432339 6 http://www.virginia.edu Answers.com allamericanhotdog.com Finally, the examining attorney submitted webpages showing a third party’s patent for a “collapsible multi- functional kiosk” that includes in the abstract the following excerpt: A refreshment dispenser is capable of being supported within the hollow, central cavity of the kiosk, and a trash receptacle is also capable of being supported within the hollow, central cavity. www.freepatentsonline.com. Serial No. 77432339 7 As can be seen from the drawing below it is designed as a stand alone apparatus that holds the water cooler or trash receptacle inside it. The examining attorney contends that “[i]f applicant’s attachments allow the coolers to display advertisements, community notices, or offer products for sale, in effect they are converting the coolers into kiosks. Unless there is some undisclosed feature of the goods that would render them unable to be used for such purposes, the proposed mark is merely descriptive of the goods. If there is such a feature, the proposed mark is deceptively misdescriptive of the goods.” Br. p. 13. In reply, applicant contends that “[t]he fact that the trademark attorney cannot decide whether applicant’s mark is merely descriptive of the goods or deceptively misdescriptive of the goods clearly indicates that applicant’s mark is neither and is at most suggestive of the goods.”1 Reply Br. p. 5. Further, applicant contends 1 Applicant’s argument that there is no statutory basis to refuse registration based on the alternative refusals of mere descriptiveness or misdescriptiveness is misplaced. It is Serial No. 77432339 8 that its mark “at most suggests that it is an attachment for a cooler.” Reply Br. p. 5. Applicant argues that there is no evidence in the record that there is a need for others to use the mark to describe their goods. Finally, as to the misdescriptiveness refusal, applicant argues that there is “no evidence to show that the public is likely to believe that applicant’s goods are designed to operate as a kiosk and that the public would be so deceived.” Reply Br. p. 9. Applicant attached a picture of a proposed advertisement showing its product: appropriate for an examining attorney to issue alternative refusals where the record is unclear as to the nature of the goods. Thus, from the examining attorney’s perspective, the identification of goods encompassed a kiosk but if the goods did not actually perform the function of a kiosk the mark could be deceptively misdescriptive. Serial No. 77432339 9 Applicant explains that its goods are attached to a water cooler and allow for the storing of articles on the water cooler and also for displaying articles on the water cooler (e.g., family pictures). Applicant argues that there is no instantaneous recognition of applicant’s goods from the mark and the mark can suggest numerous different meanings, “e.g., a ‘kiosk’ which is ‘cooler,’ i.e. neater, than other ‘kiosks.’”2 Br. p. 14. “It has been recognized that there is but a thin line of distinction between a suggestive and a merely descriptive term, and it is often difficult to determine when a term moves from the realm of suggestiveness into the sphere of impermissible descriptiveness.” In re Recovery, Inc., 196 USPQ 830, 831 (TTAB 1977). Moreover, it is well established that any doubt must be resolved in favor of the applicant. See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987), citing In re Aid Laboratories, Inc., 221 USPQ 1215, 1216 2 The third-party registrations upon which applicant relies are not determinative in this case. It is well established that we must determine each case on its own record and prior decisions by examining attorneys are not binding on the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Moreover, as noted by the examining attorney, several of them are for goods and services that are different from applicant’s identification of goods. Serial No. 77432339 10 (TTAB 1983); In re Intelligent Medical Systems, Inc., 5 USPQ2d 1674 (TTAB 1987); and In re Gracious Lady Services, Inc., 175 USPQ 380 (TTAB 1972). None of the examples submitted by the examining attorney is the type of item that is identified in the application. Applicant’s goods are more in the nature of a caddy and we do not read the term “attachment” in this case to include something akin to the patent application which involves a self-standing structure. Here, the goods are designed to hang on a water cooler and to display, store and hold articles, similar to a shower caddy. It functions as a space saver. The word KIOSK simply suggests the attribute of holding and displaying articles but with a more expansive/professional feeling. In other words, it has an atmospheric element that is not directly descriptive. Based on this record, we find that in relation to the identified goods the term “KIOSK” merely suggests the attributes of a kiosk rather than directly describing the nature of the goods. In view thereof, we find that the mark KOOLER KIOSK is not merely descriptive for these goods. Moreover, as to the misdescriptiveness refusal, in view of our finding that “KIOSK” is suggestive of an attribute, it does not misdescribe the goods. In view Serial No. 77432339 11 thereof, we find that the mark KOOLER KIOSK is not deceptively misdescriptive of the goods. Decision: The refusal to register under Section 2(e)(1) is reversed.