Konica Photo Imaging, Inc.

Trademark Trial and Appeal Board

Apr 18, 2002

No. 75872247 (T.T.A.B. Apr. 18, 2002)

4/18/02

Paper No. 10
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Konica Photo Imaging, Inc.
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Serial No. 75/872,247
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Joel E. Lutzker of Schulte Roth & Zabel LLP for Konica
Photo Imaging, Inc.

Edd Vasquez, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Wendel and Drost, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:
Konica Photo Imaging, Inc. has filed an application to
register PHOTO STATIONERY for “photofinishing services.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark
would be merely descriptive, if used in connection with

1 Serial No. 75/872,247, filed December 15, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/872,247
2
applicant’s recited services. The refusal has been
appealed and both applicant and the Examining Attorney have
filed briefs.2 An oral hearing was not requested.
The Examining Attorney maintains that the term PHOTO
STATIONERY, as applied to applicant’s services, is merely
descriptive in that it conveys the information to consumers
that applicant is providing photofinishing services in
which photographs are made into stationery. As such, the
Examining Attorney argues, the term immediately describes
the nature and purpose of the services.
To support this position, the Examining Attorney has
introduced both dictionary definitions of the words “photo”
and “stationery”3 and excepts of articles retrieved from the
Nexis database showing use of the term “photo stationery.”
As examples we note:
Her hobbies were sports, reading and photography; for
many years she gave book reviews and created
distinctive photo stationery.
The Stuart News/Port St. Lucie News (Jan. 9, 1998);

2 Applicant has attached supplementary material to its reply
brief. Pursuant to Trademark Rule 2.142(d) the record should be
complete prior to the filing of an appeal. The Board will
ordinarily not consider additional evidence filed by an applicant
after the appeal has been filed. Accordingly, no consideration
has been given to this material.
3 The word “photo” is defined as being the informal form of the
word “photograph” and “stationery” as “writing paper and
envelopes.” The American Heritage Dictionary of the English
Language (3rd ed. 1992).
Ser No. 75/872,247
3
Is there a future for a technology that lets you see
shots instantly on a TV or a PC, print only the best,
and even design your own photo stationery?
San Antonio Express-News (Oct. 4, 1996);

After coming up with endless ways of collecting,
keeping and displaying photographs, Mr. Bourne
launched his mail-order business. Exposures offers
photo restoration, the standard fare
of picture frames, photo albums and scrapbooks, as
well as photo stationery, jigsaw puzzles...
The New York Times (Feb. 7, 1988).

The Nexis articles are specifically relied upon by the
Examining Attorney as evidence that the term “photo
stationery” is a term recognizable to consumers and used by
the general public in reference to a specific type of
goods.
Applicant argues that PHOTO STATIONERY is not merely
descriptive of applicant’s services “because of the
circuitous reasoning required by prospective customers to
realize that Applicant’s services are photo finishing
services.” (Brief p. 2-3). While applicant acknowledges
that its mark contains elements which may be descriptive in
and of themselves, applicant insists that when its mark is
considered in its entirety, PHOTO STATIONERY is no more
than suggestive and does not specifically describe any
precise characteristic of photofinishing services.
Applicant contends that the words PHOTO and STATIONERY are
“seemingly incompatible” in that paper on which one writes
Ser No. 75/872,247
4
which also contains a photograph is the “antithesis of
conventional stationery.” (Brief p. 7).
Applicant further argues that it is unaware of others
using the term “photo stationery” to describe photo-
finishing services and the Examining Attorney has produced
no evidence of use of the term by competitors. Applicant
challenges the Nexis evidence produced by the Examining
Attorney, asserting, inter alia, that the articles do not
show use of the term “photo stationery” in a manner
consistent with providing photofinishing services, and that
the articles do not describe the nature of “photo
stationery” nor suggest that such stationery is a
recognizable good in commerce.
Finally, applicant argues that if there is any doubt
as to whether applicant’s mark is suggestive or merely
descriptive, this doubt should be resolved in favor of
applicant.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a characteristic or feature of the goods or services with
which it is being used, or is intended to be used. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir 1987); In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). Whether or not a particular term is merely
Ser No. 75/872,247
5
descriptive is determined not in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the designation is being
used, and the significance the designation is likely to
have to the average purchaser as he or she encounters the
goods or services bearing the designation, because of the
manner in which it is used. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary that the
term describe all the characteristics or features of the
goods or services in order to be merely descriptive; it is
sufficient if the term describes one significant attribute
thereof. See In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
As pointed out above, the issue of mere
descriptiveness is not determined in the abstract, but
rather in relation to the particular goods or services with
which the mark is being used. Thus, the question is not
whether the term PHOTO STATIONERY would in itself convey
the information to consumers that applicant provides photo-
finishing services. Instead the question is whether, as
used in connection with photofinishing services, the term
immediately and directly conveys information to consumers
as to a particular feature or characteristic of these photo
Ser No. 75/872,247
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finishing services, such that it is merely descriptive of
this particular aspect of the services.
Here the dictionary definitions alone show that the
term “photo stationery” has a readily recognizable meaning,
namely, stationery or writing paper containing photographs.
We find no incompatibility in the combination of these two
words; many types of stationery are decorated in some way
with a design yet still serve as writing paper.
In addition, the Nexis excerpts demonstrate that the
term has appeared in articles directed to the U.S. public
and used in such a manner that the term would be understood
to convey the ordinary meaning resulting from the
combination of the dictionary definitions of the two
separate words. In other words, “photo stationery” would
be understood as just that, stationery containing
photographs. While these articles may refer to the
creation of “photo stationery” by individuals, rather than
any large scale commercialization of providing such a
product, they still serve to demonstrate public familiarity
with a product of this nature. Whether or not other photo-
finishing businesses provide such a product or use this
term to describe a comparable product, we find the term
“photo stationery” immediately conveys information to the
purchasing public as to this particular feature of
Ser No. 75/872,247
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applicant’s photofinishing services, i.e., the providing of
photographs in the form of stationery. There is no
circuitous reasoning required for consumers to reach such a
conclusion as to the nature of applicant’s services.
Accordingly, we find PHOTO STATIONERY would be merely
descriptive, if used as intended with applicant’s photo-
finishing services.
Decision: The refusal to register under Section
2(e)(1) is affirmed.