Kinston Office Supply Co., Inc.

Trademark Trial and Appeal Board

Jan 24, 2001

No. 75438489 (T.T.A.B. Jan. 24, 2001)

1/24/01
Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kinston Office Supply Co., Inc.
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Serial No. 75/438,489
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Larry L. Coats and Taylor M Davenport of Coats and Bennett,
P.L.L.C. for Kinston Office Supply Co., Inc.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
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Before Cissel, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Kinston Office Supply Co., Inc. has filed an
application to register the mark "CORPORATE RESOURCES" for
"retail store services in the area of office supplies and
equipment."1
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, when used in connection with applicant's services, the mark
"CORPORATE RESOURCES" is merely descriptive of them.
1 Ser. No. 75/438,489, filed on February 23, 1998, which alleges dates
of first use of February 1, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/438,489
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
The Examining Attorney, in her brief, acknowledges that
"[i]n the abstract, the primary meaning of the term CORPORATE
RESOURCES may be the assets of a corporate entity, although there
is no evidence of that meaning in the record." As to the latter,
however, the definition of record of the term "resource" from The
American Heritage Dictionary of the English Language (3rd ed.
1992) defines such term, inter alia, as signifying "5. ... b.
resources. The total means available to a company for increasing
production or profit, including plant, labor, and raw material;
assets." Seizing, nevertheless, upon another meaning of such
term as "2. Often resources. An available supply that can be
drawn on when needed,"2 the Examining Attorney contends that
applicant's mark is merely descriptive of its services because
(footnote omitted; italics in original):
[I]n relation to the sale of office supplies
and equipment, the term CORPORATE RESOURCES
means office resources for corporate
entities, since office supplies and equipment
constitute "resources" as the term is defined
2 In addition to the foregoing definitions, the dictionary excerpt of
record includes the following meanings of the term "resource":
1. Something that can be used for support or help: The
local library is a valuable resource.
....
3. The ability to deal with a difficult or troublesome
situation effectively; initiative: a person of
resource.
....
5. a. resources. The total means available for economic
and political development, such as mineral wealth,
labor force, and armaments. .... c. Such means
considered individually.
Ser. No. 75/438,489
3
(i.e., "an available supply that can be drawn
on when needed"). In other words, the
proposed mark describes the function of the
applicant's services, in that the applicant
provides an available supply of office
supplies and equipment to corporations (i.e.,
the office supplies provided through the
service, not the retail store for the office
supplies). No imagination is required to
draw this conclusion. In fact, the meaning
of the proposed mark is quite apparent on its
face.
Applicant maintains, on the other hand, that the mark
"CORPORATE RESOURCES" is suggestive of its services inasmuch as
"the immediate thought that leaps into the average purchaser's
mind upon hearing or seeing the mark ... is the ... assets of a
corporation." In particular, applicant asserts that:
Indeed it would be highly unusual for
businesses that sell office supplies to refer
to their merchandise as corporate resources.
There is absolutely no evidence that any
business in the business of selling office
supplies has used corporate resources to
describe the products they sell. Moreover,
the use of corporate resources as a
descriptor of these services would indeed be
awkward.
Applicant also argues that, "even accepting the [Examining
Attorney's] definition of resources, the mark, as a whole, does
not immediately convey an idea of the qualities, ingredients, or
characteristics of the service[s], or directly impart information
about the services, or immediately convey the thought of
Applicant's services to one seeing or hearing the mark."
Instead, according to applicant, "there is a multi-stage
reasoning process to get from the mark to the idea of what the
services are" and, thus, the mark cannot be merely descriptive.
Ser. No. 75/438,489
4
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 Trademark Act, if it forthwith conveys
information concerning any 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, 217-18 (CCPA 1978). It is not necessary that a
term describe all of the properties or functions of the goods 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 idea about them. Moreover,
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, the context in which it is being used on
or in connection with those goods or services and the possible
significance that the term would 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). Thus,
"[w]hether consumers could guess what the product [or service] is
from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Ser. No. 75/438,489
5
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
In the present case, we agree with applicant that, even
accepting the Examining Attorney's argument that the designation
"corporate resources" includes the office equipment and supplies
utilized by a corporation, we think that such term also commonly
connotes the assets available to a corporation for increasing its
production or profit, including its office facilities, human
capital and raw materials. Given this double entendre, we
believe that, when used in connection with retail store services
in the area of office supplies and equipment, the term "CORPORATE
RESOURCES" is no more than suggestive, rather than merely
descriptive, of applicant's services. Essentially, when used in
connection with applicant's retail store services, the mark
"CORPORATE RESOURCES" imparts or conveys an air of importance or
aggrandizement to such everyday or mundane products as office
supplies and equipment by suggesting that those goods are as
essential to the productivity or success of an enterprise as are
Ser. No. 75/438,489
6
assets like manufacturing facilities, offices, employees, capital
and basic materials. Because the term "CORPORATE RESOURCES"
accordingly creates a new and different commercial impression
when used in the context of applicant's retail store services in
the area of office supplies and equipment, it is not merely
descriptive thereof within the meaning of the statute. See,
e.g., In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 385
(CCPA 1968) [mark "SUGAR & SPICE" held suggestive of various
bakery products since, while individual words of mark are
descriptive, the "immediate impression evoked by the mark," in
light of well known nursery rhyme, "may well be to stimulate an
association of 'sugar and spice' with 'everything nice'"; "[a]s
such, ... the mark, along with the favorable suggestion which it
may evoke, seems to us clearly to function in the trademark sense
and not as a term merely descriptive of goods"].
Decision: The refusal under Section 2(e)(1) is
reversed.