Holophane Corp.

Trademark Trial and Appeal Board

Aug 11, 1999

No. 75031427 (T.T.A.B. Aug. 11, 1999)

Paper No. 11
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 12, 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 Holophane Corporation
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Serial No. 74/031,427
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Maria Franek Angileri of Brooks & Cushman, P.C. for
Holophane Corporation.
Thomas W. Wellington, Trademark Examining Attorney, Law
Office 104.
_______
Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 12, 1995, applicant filed an application
to register the mark "GLASWERKS" on the Principal Register
for "electric lighting fixtures." The application was
based on applicant’s assertion that it possessed a bona
fide intention to use the mark in commerce in connection
with the goods identified in the application.
Ser No. 75/031,427
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The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that the
mark sought to be registered is merely descriptive of the
goods with which applicant intends to use it. The
Examining Attorney argued that the proposed trademark is
the equivalent of the word "glassworks," which is used to
describe a business which manufactures glass fixtures. In
that glass fixtures may be used for lighting purposes, the
Examining Attorney concluded that the proposed mark is
merely descriptive of the electric lighting fixtures with
which applicant intends to use it.
Submitted in support of the refusal were excerpts
retrieved from the Nexis automated database of articles
published in a newspaper and a magazine. The newspaper
article refers to a person who designs light fixtures and
custom glass work, and the magazine article appears to be a
footnote concerning the source of products shown in a
photo. The note indicates that custom lighting fixtures
were provided by one entity and metal and glass work by
another.
Applicant responded to the refusal to register with
argument that the proposed mark is at most suggestive,
rather than merely descriptive of the goods set forth in
the application.
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The Examining Attorney was not persuaded to withdraw
the refusal to register, however. The second Office Action
pointed out that the English equivalent of the mark is
generic for both companies that produce works of glass and
for works of glass. Submitted as additional support for
the refusal to register were copies of entries from
Webster’s New World German Dictionary indicating that an
English translation of the proposed mark is "glass
company."
Also submitted by the Examining Attorney with the
second Office Action were additional excerpts retrieved
from the Nexis database in an attempt to establish that
electric lighting fixtures are produced in glass works.
Careful analysis, however, reveals that many of these
excerpts do no such thing. For example, one notes that a
company "also designs light fixtures and custom glass
work." Another describes the "Clear Glass Works" as a
company which "fabricates custom fixtures and finishes for
buildings." The fixtures are not identified as electric
lighting fixtures, though. Other examples include the
following: "Vistosi had an outstanding display of colored
brown glass works, with several of them using halogen
fixtures."; "Albers here is seen in more dramatic light
with his early glass works."; "The truly amazing lighting
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design and the glass works feed on one another to make for
a tremendous show."; "And unlike strained (sic) glass
work, Mondrian’s art generates its own light."; "His focus
has been on creating unique lighting and glass work";
"Thomas Edison, the founder of General Electric, formed a
cooperative adventure with Corning Glass Works to produce
incandescent light bulbs."; and "there’s airiness and glow
when light hits her glass work."
Only two of the excerpts cited by the Examining
Attorney support the contention that glass works have ever
produced electric lighting fixtures. An article from the
December 6, 1992 edition of the San Diego Union Tribune
discussed a hanging light fixture from the Venini glass
works, and an article from The Economist newspaper in 1993
indicated that a light fixture was made by "Corey
Glassworks." Although a number of the excerpts submitted
by the Examining Attorney show the use of "glass works" to
refer to works of art made of glass, the above-referenced
two excerpts are the only evidence linking electric
lighting fixtures to glass companies.
In addition to the submission of additional evidence
in support of the refusal to register, the second Office
Action required applicant to submit an English translation
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of the mark to the effect that "GLASWERKS" means "glass
company" or "glass works."
Responsive to the second Office Action, applicant
amended the application to include the statement that the
English translation of "GLASWERKS" is "glass company" or
"glass work[s]." Applicant also presented more argument on
the issue of mere descriptiveness.
On July 29, 1997, the Examining Attorney’s third
Office Action made final the refusal to register under
Section 2(e)(1) of the Act.
On January 26, 1998, applicant filed a timely Notice
of Appeal to the Trademark Trial and Appeal Board. Both
applicant and the Examining Attorney submitted briefs to
the Board. Applicant attached to its brief copies of
several third-party registrations of marks which
incorporate the term "glass" and/or a variant of the term.
Each registration lists, inter alia, lighting fixtures as
goods with which the mark is alleged to be used.
The evidence concerning third-party registrations
submitted by applicant with its appeal brief would
ordinarily not be considered because of its untimely
submission under Trademark Rule 2.142(d). In this case,
however, we have considered the third-party registrations
because the Examining Attorney did not object to them, and
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in fact, argued in his brief that they do not support the
conclusion urged by applicant.
Applicant did not request an oral hearing.
Accordingly, we have resolved this appeal based on
consideration of the written arguments and the evidence
presented in the application file.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Lanham Act, if it forthwith
conveys an immediate idea of a significant 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).
The descriptive information concerning the goods must be
communicated by the mark with some degree of particularity
or specificity. In re Box Innards, Inc., 181 USPQ 412
(TTAB 1973). However, if the descriptive significance can
only be determined after the exercise of additional
thought, multi-step reasoning, speculation or surmise,
the mark is not merely descriptive within the meaning of
the Act.
In the instant case, the record does not support the
conclusion that the term sought to be registered
Ser No. 75/031,427
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immediately conveys, with any particularity, significant
information about the nature or characteristics of the
goods specified in the application. As noted above, the
evidence linking production of electric lighting fixtures
to glass companies or glass works is de minimis. The
record does not contain a sufficient basis for us to
conclude that prospective purchasers of these goods would
attach significance to the fact that such products were
produced by a glass company or glass works. To reach such
a conclusion would require some additional thought process
or imagination, and if this is required, the mark may be
suggestive of the goods, but is not merely descriptive of
them.
In summary, the evidence of record in this application
does not establish that the mark immediately and forthwith
conveys, with any degree of particularity, information
about a significant characteristic or feature of these
goods. Any doubt on this issue would necessarily have to
be resolved in favor of the applicant. In re Aid
Laboratories, Inc., 221 USPQ 1215 (TTAB 1983).
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Accordingly, the refusal to register under Section
2(e)(1) of the Act is reversed, and the application will
proceed to publication.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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