Deslauriers, Inc.

Trademark Trial and Appeal BoardJun 16, 2010

No. 77614491 (T.T.A.B. Jun. 16, 2010)

Mailed: June 16, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Deslauriers, Inc. ________ Consolidated Serial Nos. 77614485 and 77614491 _______ F. William McLaughlin of Wood, Philips, Katz, Clark & Mortimer for Deslauriers, Inc. Cory Boone, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Bucher, Cataldo and Taylor, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: On November 14, 2008 applicant, Deslauriers, Inc., applied to register in standard characters on the Principal Register the marks GROUT SAMPLE BOX1 and GSB2 both for “cardboard containers including divider inserts,” in International Class 16, based upon applicant’s assertion in 1 Application Serial No. 77614485. 2 Application Serial No. 77614491. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser Nos. 77614485 and 77614491 2 each case of January 31, 2000 as the date of first use of the mark in commerce. The trademark examining attorney refused registration to both marks under Section 2(e)(1) of the Trademark Act on the ground that such marks are merely descriptive of a feature or quality of applicant’s goods.3 When the refusals were made final, applicant appealed. Applicant filed main briefs on the issue under appeal in both cases; the examining attorney filed a consolidated brief; and applicant filed a consolidated reply brief.4 Refusal to Register Under Section 2(e)(1) It is well settled that a term is considered to be merely descriptive of goods and/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 and/or services. See Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052. See also In re Abcor 3 In addition, the examining attorney asserted genericness as a ground for refusal in the first and final Office actions issued in both applications. However, in his consolidated brief on appeal, the examining attorney asserts that “no genericness refusal was ever actually issued” (page 2, footnote 1). Accordingly, the genericness refusal is deemed withdrawn and will be given no further consideration. 4 On January 28, 2010, the Board granted the examining attorney’s motion to consolidate these proceedings. Ser Nos. 77614485 and 77614491 3 Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods and/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 feature about them. Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which registration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers could guess what the product is from consideration of the mark alone is not the test." In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). Application Serial No. 77614485 In support of the refusal to register the mark GROUT SAMPLE BOX under Trademark Act Section 2(e)(1), the examining attorney has relied upon dictionary definitions of the mark’s component terms. According to these definitions, “grout” may be defined, inter alia, as “a thin mortar used to fill cracks and crevices in masonry”; “sample” may be defined, inter alia, as “a portion, piece, or segment that is representative of a whole”; and “box” may be defined, inter alia, as “a container typically constructed with four sides perpendicular to the base and Ser Nos. 77614485 and 77614491 4 often having a lid or cover.”5 The examining attorney further submitted a screenshot from applicant’s internet website containing the following information: Frequently Asked Questions GROUT SAMPLE BOX (GSB) The Grout Sample Box (GSB) is a patented (Patent # 5942192) product specifically designed for use in casting 3.125” X 3.125” X 6.250” prisms of masonry grout for verification of compressive strength.6 The examining attorney also submitted information from applicant’s above-noted U.S. Patent 5942192 for the recited goods. The abstract for such patent identifies the invention as follows: A method and apparatus for facilitating the task of collection and transporting grout specimens. An apparatus in accordance with the invention is comprised of a container or box formed of stiff sheet material enclosing an interior volume and a partition structure, also formed of stiff sheet material, mounted in the interior volume to form multiple mold cavities….7 The examining attorney submitted in addition third-party advertisements in which the goods under the GROUT SAMPLE BOX mark are described as follows: “cardboard box designed to be used to mold grout test samples….;”8 and “GROUT SAMPLE 5 The examining attorney cites to The American Heritage Dictionary of the English Language, Fourth Edition (2000) for these definitions. We note that copies of the proffered definitions were submitted with the examining attorney’s first Office action. 6 www.deslinc.com 7 patfl.uspto.gov 8 www.myerstest.com Ser Nos. 77614485 and 77614491 5 BOX (GSB) – The GSB performs as a mold to form 4 3x3x6” mortar samples and as a transport/shipping container.”9 Finally, the examining attorney submitted a business profile for applicant from an internet website indicating as follows: “our concrete testing products include steel slump core, grout sample box, canvas wrap, test cylinder lids, graduating tamping rod and stripping tool.”10 We turn then to our determination of whether the mark GROUT SAMPLE BOX merely describes the goods identified thereby. As noted above, the examining attorney has made of record dictionary definitions of the terms comprising the applied-for mark. Based upon these dictionary definitions, we find that applicant’s mark merely describes a container, or box, used to create or transport representative samples of a thin mortar commonly known as grout. It is settled that “evidence [that a term is merely descriptive] may be obtained from any competent source, such as dictionaries, newspapers, or surveys." See In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, (Fed. Cir. 2005); and In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986). We note that applicant does not dispute these definitions of the wording 9 www.geotestinst.com 10 www.processregister.com/Deslauriers_Inc/Supplier Ser Nos. 77614485 and 77614491 6 comprising its mark, but argues that neither the words themselves nor the combination thereof in its mark are descriptive of its goods. However, applicant’s argument is contradicted by its own patent for these goods, which describes them as a box used to collect or transport grout specimens. Further, and as noted above, applicant’s goods under the GROUT SAMPLE BOX mark are described in a third- party internet advertisement as a cardboard box used to mold grout test samples.” It is settled that material obtained from the Internet is acceptable in ex parte proceedings as evidence of potential public exposure to a term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). As indicated above, applicant’s goods are identified as a “cardboard container including divider inserts.” The patent for these goods confirms that they consist of a box used to collect or transport grout specimens. Internet advertisements for applicant’s goods identify them as a box used for molding grout samples. Thus, the evidence made of record by the examining attorney supports a finding that, as applied to applicant's goods, the term GROUT SAMPLE BOX would immediately describe, without conjecture or speculation, a significant characteristic or feature of the goods. Prospective purchasers, upon confronting the term Ser Nos. 77614485 and 77614491 7 GROUT SAMPLE BOX for applicant's goods, would immediately perceive that the goods consist of a box used to mold or transport grout samples. Accordingly, we find that applicant's mark, GROUT SAMPLE BOX, in its application Serial No. 77614485, is merely descriptive as contemplated by Section 2(e)(1) of the Act. Application Serial No. 77614491 In support of the refusal to register the mark GSB under Trademark Act Section 2(e)(1), the examining attorney has relied upon evidence submitted in support of the refusal to register the mark GROUT SAMPLE BOX and argues that GSB is an acronym used interchangeably with GROUT SAMPLE BOX and that the terms are “synonymous.” However, upon careful examination of this evidence, of which the examples quoted above are illustrative, it is unclear whether applicant and third parties utilize GSB as shorthand when referring to GROUT SAMPLE BOX or whether such examples actually display GSB as a source indicator. Indeed, substantially all of the evidence made of record by the examining attorney displaying the designation GSB appears to be used only in connection with applicant’s goods. In this case, the evidence made of record by the Ser Nos. 77614485 and 77614491 8 examining attorney fails to support a finding that, as used in connection with applicant's goods, the term GSB would immediately describe, without conjecture or speculation, a significant characteristic or feature thereof. The evidence of record supports a finding that GSB is used by applicant as an initialism for GROUT SAMPLE BOX. However, such a finding does not, by itself, compel a determination that GSB merely describes a feature or characteristic of applicant’s goods. That is to say, simply because the evidence of record shows that GSB is derived from the term GROUT SAMPLE BOX, it does not necessarily show that the initialism GSB would be understood by consumers of applicant’s goods as merely describing applicant’s cardboard containers including dividers. Moreover, and as discussed above, substantially all of the examples appear to use GSB as a trademark in relation to applicant’s goods. Thus, we find that the evidence made of record by the examining attorney in this case fails to support his contention that the mark GSB merely describes a function, feature or characteristic of the identified goods. Finally, if doubt exists as to whether a term is merely descriptive, it is the practice of this Board to resolve doubts in favor of the applicant and pass the application to publication. See In re Gourmet Bakers Inc., Ser Nos. 77614485 and 77614491 9 173 USPQ 565 (TTAB 1972). In this way, anyone who believes that the term is, in fact, descriptive, may oppose and present evidence on this issue to the Board. Decision The refusal to register is affirmed as to the term GROUT SAMPLE BOX in application Serial No. 77614485. The refusal to register is reversed as to the mark GSB in application Serial No. 77614491. Accordingly, application Serial No. 77614491 will be forwarded for registration in due course.