Diamond Communication Products, Inc.

Trademark Trial and Appeal Board

Jun 14, 1999

No. 75120720 (T.T.A.B. Jun. 14, 1999)

Paper No. 13
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 14, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Diamond Communication Products, Inc.
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Serial No. 75/120,720
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Diamond Communication Products, Inc., pro se1
Richard Y. Kim, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney)
_______
Before Simms, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:

1 Applicant was represented by outside counsel throughout this
case, including through the filing of applicant’s reply brief in
September 1998. Thereafter, in March 1999, applicant’s attorneys
filed a “request for permission to withdraw as attorney of
record.” Applicant filed a paper objecting thereto. By Board
order dated May 17, 1999, applicant’s attorneys’ request to
withdraw was granted. Therefore, applicant is now pro se.
Accordingly, applicant’s copy of this final decision will be sent
to applicant at its address in Garwood, New Jersey. (A courtesy
copy will be sent to the address in Memphis, Tennessee as set
forth in applicant’s attorneys’ request to withdraw.)
Ser. No. 75/120720
2
Diamond Communication Products, Inc. has filed an
application to register the mark SINGLE WRAP for
“nonmetallic ties for fastening electrical, telephone and
fiber optic cables in place” (International Class 22).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, if used on applicant’s identified goods, the
applied-for mark SINGLE WRAP, would be merely descriptive
of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The Examining Attorney contends that the applied-for
mark immediately describes a characteristic, use or purpose
of applicant’s stated goods in that “it refers to ties that
require only one coil around the subject material in order
to bind” (Final Office action, p. 2); that based on the
ordinary meaning of the component words, the term “single
wrap” is merely descriptive of “ties, fasteners, string,
rope or tape” (Final Office action, p. 3) which goes around
the involved material only once in order to be securely

2 Application Serial No. 75/120,720, filed June 18, 1996, wherein
applicant alleges a bona fide intention to use the mark in
commerce.
Ser. No. 75/120720
3
fastened in place; and that there is neither an incongruous
nor a separate unitary meaning created by the term SINGLE
WRAP. The Examining Attorney also argues that applicant
concedes that its nonmetallic ties function with a “single
wrap” by its statement that the goods “can be installed
with one or two wraps depending on the application.”
(Applicant’s May 30, 1997 response, p. 3).
In support of his position, the Examining Attorney
relies upon the following definitions from Webster’s II New
Riverside University Dictionary (1994):
“single,” which is defined in
pertinent part as “2.b. Consisting of
one alone”; and
“wrap,” which is defined in
relevant part as “4. To clasp, fold, or
coil about something.”3
In addition, he submitted 19 assertedly representative
excerpted stories out of 124 articles retrieved from a
Lexis/Nexis database search of the phrase “single wrap”;
and a printout of the search report page showing 351
stories were located including the term “double wrap.”
Applicant contends that its mark is a composite mark
which is at most suggestive of the goods; that the

3 The same dictionary, we note, includes another definition of
“wrap” as “To coil, wind, or twist about or around something.”
Ser. No. 75/120720
4
Examining Attorney has submitted no relevant evidence to
show that the term “single wrap” is merely descriptive
because the excerpted stories do not specifically “refer or
relate to the telecommunications industry in any way”
(Applicant’s May 30, 1997 response, p. 2), nor do the
stories specifically relate to applicant’s goods
(“nonmetallic ties for fastening electrical, telephone and
fiber optic cable in place”). In addition, applicant
argues that the dictionary does not have an entry for the
two words together; and that doubt on this issue is
resolved in favor of the applicant. Although the
application is based on intent to use, applicant submitted
a page from its catalog showing use of the term SINGLE WRAP
STRAP with a “TM” appearing after the word “WRAP.” Based
thereon, applicant asserts that “the fact that Applicant’s
mark creates a phrase that rhymes is inventive, and is
likely to evoke a unique commercial impression.”
(Applicant’s May 30, 1997 response, p. 4).
A term is considered merely descriptive of goods or
services, within the meaning of Section 2(e)(1), 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
Ser. No. 75/120720
5
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that the term describe all of the
properties or functions of the goods or services in order
for the term to be considered merely descriptive thereof;
rather it is sufficient if the term describes a significant
attribute or idea about them. And, of course, 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 and the possible significance
that the term may 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). See
also, In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB
1995); and In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
In analyzing the Lexis/Nexis evidence we disagree with
applicant that all such excerpted stories are irrelevant.
First, applicant’s goods include ties for fastening
electrical cables, so that applicant’s goods could be used
in the electrical industry, which is clearly broader than
“the telecommunications industry” as stated by applicant.
Second, those stories which include use of the term “single
wrap” in the context of some type of fastener or tie are
clearly relevant to the common understanding of the
Ser. No. 75/120720
6
involved term. Examples of two of the relevant excerpted
stories are quoted below:
“Stainless steel cable tie has
patented dual locking system. Provides
versatile, low-profile, single-wrap tie.
A quick squeeze of Tie-Lok Tool forms
two strong locks, with combined locking
force of over...” Electric Light &
Power, October 1991; and
“...pipeline is a grade B, spiral
weld seam pipe with .0375-in. wall
thickness. It was originally coated
with single wrap tape. Some pipe areas
were coated with double wrap tape,” Oil
& Gas Journal, June 21, 1993.
Moreover, as stated by our primary reviewing court in
the case of In re Gould Paper Corporation, 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for
wipes that clean computer and television screens), the
Patent and Trademark Office may satisfy its evidentiary
burden by means of dictionary definitions showing that the
“separate words joined to form a compound have a meaning
identical to the meaning common usage would ascribe to
those words as a compound”.
When the Lexis/Nexis evidence is viewed together with
the dictionary definitions in the record of the terms
Ser. No. 75/120720
7
“single” and “wrap,”4 we are of the opinion the applied-for
mark is no more than a combination of two merely
descriptive terms, with the composite mark remaining merely
descriptive. That is, consumers for applicant’s
nonmetallic ties would readily understand that the term
SINGLE WRAP refers to a tie or fastener which will
accomplish fastening the item(s) in place by means of only
a singular wrap around said item(s). As such, the term
immediately and without conjecture or speculation describes
a significant characteristic, feature, or use of
applicant’s goods (i.e., that applicant’s ties work when
wrapped once around the electrical, telephone or fiber
optic cables to fasten them in place). See In re
Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
(SMARTPROBE merely descriptive of disposable cryosurgical
probes); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994)
(SCREEN FAX PHONE merely descriptive of facsimile terminals
employing electrophoretic displays); In re Eden Foods Inc.,
24 USPQ2d 1757 (TTAB 1992) (DOUBLE CERTIFIED ORGANIC held
merely descriptive of pasta); Domino’s Pizza Inc. v. Little
Caesar Enterprises Inc. 7 USPQ2d 1359 (TTAB 1988) (SINGLE,
DOUBLE and TRIPLE merely descriptive of applicant’s pizza);

4 The fact that the composite term SINGLE WRAP is not found in
the dictionary is not controlling on the question of whether the
Ser. No. 75/120720
8
In re IBP, Inc., 228 USPQ 304 (TTAB 1985) (requirement for
a disclaimer of the merely descriptive terms “select trim”
for pork affirmed); and In re Truckwriters Inc., 219 USPQ
1227 (TTAB 1983), aff’d unpubl’d Appeal No. 84-689 (Fed.
Cir., November 1, 1984) (requirement for a disclaimer of
the merely descriptive term “writers” for insurance agency
services affirmed).
Applicant’s reliance on the case of In re Shutts, 217
USPQ 363 (TTAB 1983) is not persuasive of a contrary
result. In holding the mark SNO-RAKE not merely
descriptive of a snow removal hand tool, the Board stated
that mere descriptiveness must relate to generally
recognizable word formulations and meanings, and “should
not penalize coinage of hitherto unused and somewhat
incongruous word combinations whose import would not be
grasped without some measure of imagination and ‘mental
pause’,” Shutts case, supra at 364-365.
However, in the case now before the Board, the
applied-for mark does not involve any “hitherto unused and
somewhat incongruous word combinations,” and there is no
imagination needed to understand the meaning of SINGLE
WRAP. The dictionary definitions of the terms ‘single’ and

applied-for mark is merely descriptive. See In re Orleans Wines,
Ltd., 196 USPQ 516 (TTAB 1977).
Ser. No. 75/120720
9
‘wrap,’ as well as several excerpted Lexis/Nexis stories,
establish that these two ordinary words have a commonly
understood meaning. Applicant’s argument that it uses the
words SINGLE WRAP STRAP resulting in a combined phrase
which rhymes, making the mark inventive and likely to evoke
a unique commercial impression is unpersuasive.
Applicant’s applied-for mark is SINGLE WRAP and does not
include any rhyming words. Even if applicant had included
the generic term “strap” in its applied-for mark, we
disagree that such alleged “rhyming” would render the
composite term unique.
We find that when used in connection with nonmetallic
ties for fastening electrical, telephone and fiber optic
cables in place, the relevant purchasers would understand
the words to mean a tie or fastener which secures the
matter in place by wrapping the tie around the matter one
single time.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
R. L. Simms
P. T. Hairston
B. A. Chapman
Ser. No. 75/120720
10
Administrative Trademark
Judges, Trademark Trial and
Appeal Board