Delta T Corp.

Trademark Trial and Appeal BoardSep 24, 2012

No. 85310163 (T.T.A.B. Sep. 24, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: September 24, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Delta T Corp. ________ Serial No. 85310163 _______ Andrew D. Dorisio of King & Schickli PLLC for Delta T Corp. Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Bucher, Cataldo and Wolfson, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Delta T Corp., filed an application to register as a trademark on the Principal Register the standard character mark SMASHINGLY DURABLE for “Electric fans; Ventilating fans for commercial and industrial use” in International Class 12.1 1 Application Serial No. 85310163 was filed on May 2, 2011, based upon applicant’s assertion of March 20, 2011 as a date of first use of the mark anywhere and in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). Ser. No. 85310163 2 The examining attorney refused registration pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on applicant’s failure to comply with the requirement to disclaim the word “DURABLE” on the ground that it is merely descriptive of applicant’s goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs on the issue under appeal, and applicant filed a reply brief. We reverse the refusal of registration in the absence of the disclaimer. An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a). Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto Ser. No. 85310163 3 Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). 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 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of an 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); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). The examining attorney argues that the term “DURABLE” merely describes a feature or characteristic of applicant’s fans. The examining attorney further argues that the mark SMASHINGLY DURABLE is neither a unitary slogan, nor a double entendre, nor is it incongruous such that a disclaimer of the descriptive term “DURABLE” is not required. Ser. No. 85310163 4 In support of the refusal, the examining attorney has made of record the following definition of “DURABLE” – “capable of withstanding wear and tear or decay, a durable fabric.”2 In addition, the examining attorney made of record screenshots from commercial and informational Internet websites discussing durability as a sought-after feature of various types of fans. The following examples are illustrative: Durable, Elegantly Designed Ceiling Fans If you plan to improve your home décor with energy efficient, durable, high quality, stylish ceiling fans and accessories, you should visit Hansen Wholesale Ceiling Fans for their extensive selection of contemporary, Oriental-Asian, transitional, traditional, Victorian-Fancy, industrial and Tropical ceiling fans.;3 Craftmade Ceiling Fans Durable, Reliable, Energy Efficient There are one-hundred and twenty-seven different models of ceiling fans and twenty different series by this brand. These are some of the most durable and reliable fans out there, and they are also very energy efficient.;4 and Multifan Using the brand name Multifan, Vostermans Ventilation manufactures a wide range of ventilating products for the agricultural industry and industrial applications. The axial fan Multifan is known and valued for its efficiency and trustworthiness. We manufacture the motor ourselves in-house and match the blade 2 The American Heritage Dictionary of the English Language, (2009), retrieved from dictionary.com. 3 Kutenk2000.blogspot.com 4 Ceilingfan-wizard.com Ser. No. 85310163 5 to the motor for optimum performance. Because we are able to control both motor and blade construction, our products are well known for consistent high quality, durability, and longevity, and are available worldwide in more than 70 countries.5 The examining attorney also introduced the following evidence from applicant’s own Internet website: Big Ass Fan Company® Introduces the smashingly durable Yellow Jacket® The world’s biggest name in Big Fans introduces the Yellow Jacket, the portable fan that takes abuse and stays in use. Five years in development, Yellow Jacket is designed for incredible flexibility and amazingly quiet operation, but most importantly, it’s so smashingly durable it will never need to be replaced. … Yellow Jacket won’t crumble after a forklift love tap. How do we know? Watch one of our engineers attempt to challenge Yellow Jacket’s durability here. Listening to customers and their needs, Big Ass Fans took a highly engineered, problem solving approach to address the endless repair-and- replace cycle of current fans and employed the air movement expertise for which all Big Ass fans are known. The result is the most durable and quiet fan in its class – a fan good enough to be called a Big Ass Fan.6 The examining attorney further made of record the following screenshots from applicant’s Internet website: 5 Multifanusa.com 6 Bigassfans.com Ser. No. 85310163 6 Ser. No. 85310163 7 In support of its position, applicant asserts that SMASHINGLY DURABLE is a unitary slogan, “an advertising phrase which accompanies other marks such as house marks (e.g., BIG ASS FANS) and product line marks (e.g., YELLOW JACKET).”7 Applicant argues that, as a result, a disclaimer of “DURABLE” is not necessary “regardless of the descriptive character of any component.”8 Applicant further asserts that SMASHINGLY DURABLE is a double entendre. In support of its position, applicant submits the following definition of “smashing” – (1) “that smashes, crushing, a smashing defeat; and (2) extraordinarily impressive or effective, a smashing performance.”9 Applicant argues that “these two meanings create two distinct and easily recognizable interpretations of the expression ‘SMASHINGLY DURABLE’ as it relates to the goods…,”10 one of which is negative and the other positive. Applicant contends that “neither meaning is descriptive of fans.”11 Finally, applicant argues that “SMASHINGLY DURABLE creates an incongruity of two words that do not naturally join to 7 Applicant’s brief, p. 2. 8 Id. at 4. 9 Merriam-webster.com 10 Id. at 5. 11 Id. Ser. No. 85310163 8 create a single idea, but rather have two disparate meanings.”12 Based upon the evidence of record, we find that the examining attorney has made a prima facie case that the word “DURABLE” is descriptive as used in connection with applicant’s goods. Specifically, the word “DURABLE” clearly and unambiguously describes a significant feature of applicant’s fans, namely, that they are capable of withstanding wear and tear, even misuse or abuse, without requiring replacement. Indeed, applicant’s own Internet advertisements for its fans touts their robust design and construction, and utilize the terms “durable” and “durability” to describe this key feature or characteristic thereof. This is hardly surprising, given the commercial and industrial applications for which applicant’s fans are designed to be used and the need for reliable, durable fans that do not require frequent repair or replacement. We turn then to applicant’s arguments as to why this descriptive term need not be disclaimed apart from its mark. First, we are not persuaded by applicant’s argument that its SMASHINGLY DURABLE mark is a unitary slogan such that a disclaimer of “DURABLE” is unnecessary. First, the terms comprising applicant’s standard character word mark 12 Id. at 6. Ser. No. 85310163 9 are not so merged together, or physically connected by lines or any design features, that the words SMASHINGLY DURABLE create a unitary whole. Cf. In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); and Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). Rather, the term SMASHINGLY simply modifies the term DURABLE without additional elements or novel presentation resulting in the combination itself creating any new meaning. See, e.g., In re Slokevage, 441 F.3d 957, 963 78 USPQ2d 1395, 1400 (Fed. Cir. 2006); and Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052. Applicant’s assertions that its SMASHINGLY DURABLE mark is used with other marks such as its house mark and product line marks does not change the result, inasmuch as our determination herein must be based solely upon the applied-for mark as used in connection with the recited goods. Thus, the record of this case does not support applicant’s claim that its mark is a unitary slogan. However, we find persuasive applicant’s argument that its mark is incongruous. Applicant argues that “something ‘that smashes’ or is susceptible to crushing, is generally not regarded as durable, or able to withstand crushing.”13 13 Id. Ser. No. 85310163 10 In other words, it is applicant’s position that consumers will view its SMASHINGLY DURABLE mark as connoting something that is easily crushed, yet somehow durable. Based upon the evidence of record, we agree that the mark SMASHINGLY DURABLE readily connotes objects (in this case, fans) that are durable notwithstanding that they may readily be smashed or crushed. Such a connotation clearly presents an incongruity. See, e.g., In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978); In re Shutts, 217 USPQ 363, 364–5 (TTAB 1983); In re Vienna Sausage Mfg. Co., 156 USPQ 155, 156 (TTAB 1967); and In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966). We similarly are persuaded that applicant’s SMASHINGLY DURABLE mark is a double entendre. As discussed above, “smashing” is defined alternately as something “that smashes, crushing, a smashing defeat; and something that is “extraordinarily impressive or effective, a smashing performance.” Based upon this definition, SMASHINGLY DURABLE connotes, on the one hand, goods that are extraordinarily durable and, on the other, goods possessing durability that “crushes” in a literal or colloquial sense. The latter in particular presents a double entendre as fans are commonly understood to move air for ventilation and other purposes and certainly are not used to crush anything Ser. No. 85310163 11 or intended to be crushed. As a result, we find that consumers will view the SMASHINGLY DURABLE mark as having several connotations. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008); In re Simmons Co., 189 USPQ 352 (TTAB 1976); and In re Del. Punch Co., 186 USPQ 63 (TTAB 1975). In short, the evidence of record supports a finding that the consuming public would readily perceive multiple associations of SMASHINGLY DURABLE, and that such associations would be apparent from the mark itself. Finally, we observe that both applicant and the examining attorney submitted third-party registrations to show that the USPTO has alternatively treated terms comprising the mark as well as synonyms for terms comprising the mark as descriptive or not descriptive by sometimes requiring a disclaimer of the term and sometimes not requiring a disclaimer. The most that can be said of this evidence is that it is inconclusive. In fact, these registrations highlight why prior decisions in other applications are not binding on the Board and underscore the need to evaluate each case on its own record. In re Nett Designs Inc., 57 USPQ2d 1564. Decision: The refusal to register based on applicant’s failure to disclaim DURABLE is reversed.