Paper No. 11
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THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chewing Brush, Inc.
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Serial No. 75/240,225
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Gary J. Nelson of Christie, Parker & Hale, LLP for Chewing
Brush, Inc.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
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Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed an intent-to-use application
seeking registration on the Principal Register of the mark
CHEWING BRUSH for goods identified in the application as
"toothbrushes."1 The Trademark Examining Attorney has
1 Serial No. 75/240,225, filed February 11, 1997. The original
identification of goods in the application was "dental care
devices; namely, brushes for cleaning teeth." Applicant amended
the identification to "toothbrushes" in compliance with the
Trademark Examining Attorney’s requirement made in the first
Office Action.
Ser. No. 75/240,225
2
refused registration on the ground that the mark is merely
descriptive of the identified goods, and thus unregistrable
under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).2
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
have filed main briefs, and applicant has filed a reply
brief. No oral hearing was requested.
The evidence of record on this appeal consists of an
article and an article excerpt obtained from the NEXIS
database, which were attached to the Trademark Examining
Attorney's initial and final Office Actions, respectively,
and a dictionary definition of the word "brush," submitted
by applicant as an exhibit to its main brief and of which
we take judicial notice.
2 We note that, in his brief, the Trademark Examining Attorney
suggests that registration also should be refused because
applicant has failed to provide information as to the nature of
its goods. (Brief, p. 3.) A review of the file shows that, in
the first Office Action, the Trademark Examining Attorney, citing
Trademark Rule 2.61(b), required applicant to "submit any
informational literature it has that describes its product to
permit proper consideration of the application." Applicant
responded to this requirement by stating that because the
application is based on intent-to-use, "no informational
literature of the type requested is readily available in this
case." (January 23, 1998 response paper, p. 2.) In his final
Office Action, the Trademark Examining Attorney did not comment
on applicant’s response, nor did he make any further requirement
for submission of information regarding the nature of applicant’s
product. Accordingly, such a requirement is not at issue in this
appeal.
Ser. No. 75/240,225
3
The first NEXIS article, attached to the initial
Office Action, is from the March 22, 1997 edition of The
Orange County Register. In relevant part, it reads as
follows:
Here’s a new twist on brushing your teeth.
Chewing Brush from Noah Co. is a new, bite-
size dental product that the manufacturer
claims cleans teeth, reduces plaque,
stimulates gums and refreshes the mouth
without water, toothpaste or the use of your
hands. Used exactly like chewing gum,
Chewing Brush positions itself against teeth
and gums at a 45-degree angle allowing tiny,
soft, rounded bristles to reach between
teeth, along and under the gumline. Each
Chewing Brush is flavored with mint oil and
plaque-reducing Xylitol. Especially handy
for travelers, campers, or people with
physical disabilities. Cost: $19.97 (post
paid) for 36 Chewing Brushes.
Attached to the Trademark Examining Attorney’s final Office
action was a NEXIS excerpt from an article in the December
14, 1997 edition of The Sunday Gazette Mail (Charleston
Newspapers), under the headline "Microbrewed beer shampoo
loses big in consumer polls," which reads in its entirety
as follows: ". . . upon itself to measure response to often
offbeat business ideas, including edible chocolate-lined
straws and a brushless toothbrush you chew like bubble
gum."3
3 Also attached to the final Office Action was a NEXIS excerpt
consisting of a headline of an article (but not the article
Ser. No. 75/240,225
4
The dictionary excerpt made of record and relied on by
applicant is from Webster’s Third International Dictionary
(1993) at 286, wherein "brush" is defined as, inter alia,
"a hand-operated or power-driven tool or device composed of
bristles set into a back or handle or attached to a roller
and designed or adapted for such uses as sweeping,
scrubbing, painting, and smoothing
."
A term is merely descriptive of goods or services,
within the meaning of Trademark Act 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 mark 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.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
itself or any excerpt therefrom) from the November 18, 1997
edition of the Daily Mail (London). This excerpt, from a
publication which has not been shown to have wide circulation in
the United States, is not competent evidence that the purchasing
public in this country would perceive applicant’s mark to be
merely descriptive. See In re Professional Tennis Council, 1
USPQ2d 1917 (TTAB 1986).
Ser. No. 75/240,225
5
MBAssociates, 180 USPQ 338 (TTAB 1973). 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. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
In support of his Section 2(e)(1) mere descriptiveness
refusal, the Trademark Examining Attorney argues
essentially that "toothbrushes," the goods identified in
the application, are encompassed within the word BRUSH
appearing in applicant’s mark; that the NEXIS evidence of
record establishes that there is a new type of toothbrush
that is designed to be chewed;4 that CHEWING is merely
descriptive of this feature of this new type of toothbrush;
4 The Trademark Examining Attorney does not contend that the use
of the term "Chewing Brush" in the above-quoted article from the
March 22, 1997 edition of The Orange County Register is, itself,
evidence that CHEWING BRUSH is merely descriptive of applicant’s
goods. As pointed out by applicant in response to the first
Office Action, the usage of the term in this article appears to
be trademark usage, rather than merely descriptive usage.
Accordingly, the Trademark Examining Attorney appears to be
relying on this article only in support of his contention that a
new type of "chewable" toothbrush exists.
Ser. No. 75/240,225
6
and that CHEWING BRUSH accordingly is merely descriptive of
such toothbrushes.
We find that the Trademark Examining Attorney has not
made out a prima facie case that CHEWING BRUSH is merely
descriptive of the goods identified in the application,
i.e., "toothbrushes." Brushes, such as toothbrushes, are
normally not chewed upon or designed to be chewed upon.
The word CHEWING accordingly is incongruous as applied to
toothbrushes, and thus is at most suggestive, rather than
merely descriptive of those goods.
Contrary to the Trademark Examining Attorney’s
contention, the record in this case does not establish that
there is a new type of toothbrush which is designed to be
chewed upon, or that the dental device referred to in the
above-quoted article from The Orange County Register is or
would be referred to as a "toothbrush," within the common
commercial meaning of that term.5 Therefore, the fact that
such a device may exist is not probative evidence on the
question of whether CHEWING BRUSH is merely descriptive of
the goods identified in this application, i.e.,
5 If applicant submits specimens of use in which it appears that
it is using its mark on a new type of dental device such as the
one described in the article, which cannot properly be called a
toothbrush, the Trademark Examining Attorney may wish to consider
whether the identification of goods accurately reflects
applicant’s product.
Ser. No. 75/240,225
7
"toothbrushes."6 As for the second NEXIS excerpt relied on
by the Trademark Examining Attorney, from the December 14,
1997 edition of The Sunday Gazette Mail which refers only
to "a brushless toothbrush you chew like bubble gum," the
excerpt is so devoid of context as to be of little or no
probative value in this case.
In short, the Trademark Examining Attorney has failed
to meet his burden of establishing a prima facie case of
mere descriptiveness. The incongruity of the juxtaposition
of the terms CHEWING and BRUSH suffices to render the mark
suggestive, rather than merely descriptive, as applied to
"toothbrushes." To the extent that any doubt as to this
conclusion exists, we must resolve it in favor of
applicant. See In re Conductive Systems, Inc., 220 USPQ 84
(TTAB 1983).
Although we have found that the mark as a whole has
not been shown to be merely descriptive, we also find that
BRUSH is merely descriptive of the identified goods, i.e.,
"toothbrushes." Webster’s Ninth New Collegiate Dictionary
(1990) at p. 1243 defines "toothbrush" as "a brush for
cleaning the teeth." (Emphasis added.) Accordingly, the
refusal of registration is affirmed to the extent that
6 We need not decide in this case whether CHEWING BRUSH is merely
descriptive of the dental device discussed in the article.
Ser. No. 75/240,225
8
applicant’s mark may not be registered without a disclaimer
of BRUSH apart from the mark as shown. Applicant is
allowed until thirty days from the date of this order to
submit an appropriate disclaimer statement to the Board for
entry into the application record, upon which the refusal
of registration will be set aside.7 See Trademark Rule
2.142(g); In re S.D. Fabrics, Inc., 223 USPQ 56 (TTAB
1984); TBMP §1218.
E. J. Seeherman
T. J. Quinn
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board
7 The proper format for the disclaimer statement is as follows:
No claim is made to the exclusive right to use the word BRUSH
apart from the mark as shown.
