Eran Industries, Inc.

Trademark Trial and Appeal Board

Aug 3, 1999

No. 75117565 (T.T.A.B. Aug. 3, 1999)

Paper No. 12
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 3, 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 Eran Industries, Inc.
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Serial No. 75/117,565
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Denise C. Mazour of Zarley McKee Thomte Voorhees & Sease
for Eran Industries, Inc.
Thomas W. Wellington, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney)
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Before Seeherman, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Eran Industries, Inc. has appealed from the refusal of
the Trademark Examining Attorney to register LEAFPROOF as a
trademark for "metal gutter covers having a water channel."1
Registration has been refused pursuant to Section 2(e)(1)

1 Application Serial No. 75/117,565, filed June 11, 1996,
asserting a bona fide intention to use the mark in commerce.
Ser. No. 75/117,565
2
of the Trademark Act, 15 U.S.C. 1052(e)(1), on the basis
that applicant’s mark is merely descriptive of its goods.
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
We affirm the refusal.
Section 2(e)(1) of the Trademark Act prohibits, inter
alia, the registration of a mark which, when used on or in
connection with the goods of the applicant, is merely
descriptive of them. A term is merely descriptive if, as
applied to the goods or services in question, it describes
an ingredient, quality, characteristic, function, feature,
composition, purpose, attribute, use, etc. of such goods or
services. In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986).
Applicant’s mark, LEAFPROOF, clearly and directly
conveys the purpose of the product, i.e., that its gutter
covers prevent leaves from getting into gutters. The
literature applicant has supplied pertaining to its
competitors’ products show that this is a desirable
characteristic of a gutter cover, a fact which applicant
itself has acknowledged. "[A]ll of the ads extol the
ability of their products to protect gutters from leaves
entering the gutters." Brief, p. 4. For example, the
brochure for the GUTTER HELMET gutter protection system
Ser. No. 75/117,565
3
says "Gutter Helmet keeps your gutters cleared of leaves
and debris in all types of weather for truly comprehensive
protection from water damage." The brochure for GUTTER
PROTECH states that "No leaves or debris large enough to
clog your down spouts can get through the openings in the
face of your new gutter protection system." And the
brochure for GUTTER TOPPER uses the slogan "The Amazing
Leaf Stopper."
Consumers would clearly understand that LEAFPROOF
describes this desirable characteristic of a gutter cover.
The Examining Attorney has made of record dictionary
listings showing that "proof" means "able to withstand;
successful in not being overcome; proof against temptation"
and "impenetrable, impervious or invulnerable: proof
against outside temperature changes."2 Moreover, the
advertising literature of applicant’s competitors shows
that terms such as "leak-proof" and "ice-proof" are used to
describe gutter systems. See advertisement for K-GUARD.
Thus, although "leafproof" is not a word found in the
dictionary, the meaning of it, in the context of metal
gutter covers having a water channel is clear. See, In re
Central Counties Bank, 209 USPQ 884, 888 (TTAB 1981) ("that

2 Random House Unabridged Dictionary, 2d ed. © 1987.
Ser. No. 75/117,565
4
the specific term ’CASH RESERVE CHECKING’ is not found in a
dictionary of the English language is not controlling on
the issue of descriptiveness if the term as a whole
immediately conveys a descriptive significance as applied
to applicant's services….") In this case, LEAFPROOF
directly and immediately conveys the information that
applicant's gutter covers protect against, or make gutters
impervious to, leaves. We would also point out, in
response to applicant's argument that "upon seeing the mark
'Leafproof', one would not know that the goods are 'metal
gutter covers having a water channel," brief, p. 2, that
the question of descriptiveness is not determined in a
vacuum but in relation to the goods on which, or the
services in connection with which, it is used. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Finally, applicant argues that its competitors do not
use the term "leafproof" to describe their products, and
that this means that competitors have no need to use this
mark. The fact that a term may currently be in use by only
the applicant cannot support the registration sought if the
mark as used projects only a merely descriptive
significance. See In re Tekdyne Inc., 33 USPQ2d 1949, 1953
(TTAB 1994).
Ser. No. 75/117,565
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Decision: The refusal of registration is affirmed.
E. J. Seeherman
B. A. Chapman
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board