Kinston Office Supply Co., Inc.Download PDFTrademark Trial and Appeal BoardJan 24, 2001No. 75438489 (T.T.A.B. Jan. 24, 2001) Copy Citation 1/24/01 Paper No. 9 GDH/gdh UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Kinston Office Supply Co., Inc. ________ Serial No. 75/438,489 _______ 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). _______ 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. Copy with citationCopy as parenthetical citation