Liberty Hardware Mfg. Corp.

Trademark Trial and Appeal BoardJul 31, 2009

No. 77325477 (T.T.A.B. Jul. 31, 2009)

Mailed: July 31, 2009 PTH UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Liberty Hardware Mfg. Corp. ________ Serial No. 77325477 _______ Edgar A. Zarins, Esq. for Liberty Hardware Mfg. Corp. Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Hairston, Holtzman and Kuhlke, Administrative Trademark Judges. Opinion by Hairston, Administrative Trademark Judge: On November 9, 2007 Liberty Mfg. Corp. filed an intent-to-use application to register the mark IRON PEWTER (in standard character form) for goods ultimately identified as “coating finish which provides a decorative appearance for cabinet and bath hardware” in International Class 2. The trademark examining attorney has refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s mark is merely descriptive of the identified goods. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77325477 2 When the refusal was made final, applicant appealed. Applicant and the examining attorney have filed briefs. The examining attorney maintains that IRON PEWTER describes a feature of applicant’s goods. Specifically, the examining attorney argues that the evidence shows that the individual terms IRON and PEWTER refer to finishes applied to cabinet and/or bath hardware, and that the composite mark IRON PEWTER is equally descriptive of a type of finish for such hardware. In support of the refusal to register, the examining attorney made of record the following definitions from The American Heritage Dictionary of the English Language (Fourth Edition 2000): iron: A silvery-white, lustrous, malleable, ductile, magnetic or manageable, metallic element occurring abundantly in combined forms, most notably in hematite, limonite, magnetite, and taconite, and used alloyed in a wide range of important structural materials. pewter: Any of numerous silver-gray alloys of tin with various amounts of antimony, copper, and sometimes lead, used widely for kitchen utensils and tableware. In addition, the examining attorney submitted materials taken from several Internet websites. The homepage of Spokane Hardware Supply, Inc. (www.thehardwarehut.com) states that: “The cabinet knobs, drawer pulls and bail pulls from the Berenson Provence cabinet hardware Ser No. 77325477 3 collection come in a pewter French iron finish.” The homepage of Bellacor Lighting and Home Furnishings (www.bellacor.com) advertises a “Smooth Iron Pewter Leaf Knob.” A classified advertisement on “eBay” offers an “Iron Pewter Double Switch plate Cover” for sale. Applicant’s homepage (www.libertyhardware.com) features samples of its most popular finishes. Included are “Old World Pewter;” “Antique Pewter;” and “Antique Iron.” Applicant, in urging reversal of the refusal to register, concedes that “the Examining Attorney provides evidence that the individual words “iron” and “pewter” are used to denote finishes ….” (Brief, p. 1). However, applicant contends that the combined term IRON PEWTER is a “whimsical combination” and “it will require some mental gymnastics by the consumer to determine the true nature of the goods.” Applicant maintains that the examining attorney has failed to present evidence that “an ‘iron pewter’ finish exits (sic) or has been used to describe similar products.” (Brief, p. 1). A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Ser No. 77325477 4 Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 21-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). 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, 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; that a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “the question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey Ser No. 77325477 5 information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See, e.g., In re Tower Tech Inc., supra [SMARTTOWER merely descriptive of commercial and industrial cooling towers]; and In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS merely descriptive of computer programs for use in development and deployment of application programs]. As indicated, applicant concedes that the examining attorney’s evidence establishes that the individual terms “iron” and “pewter” are used to describe cabinet hardware finishes. Thus, we conclude that the individual terms “iron” and “pewter” have descriptive significance when used in connection with applicant’s identified goods, namely, “coating finish which provides a decorative appearance for cabinet and bath hardware.” Ser No. 77325477 6 Furthermore, we find that the combination IRON PEWTER is as merely descriptive as the individual terms. When the proposed mark is viewed in the context of applicant’s goods, the term immediately informs prospective purchasers that applicant’s coating finish is a combination or mix of iron and pewter coating finishes. Neither imagination or thought is required for a purchaser to arrive at this conclusion concerning the feature of the goods. We are not persuaded by applicant’s contention that IRON PEWTER is a “whimsical combination.” Applicant does not explain specifically what is playful or unusual about the combination IRON PEWTER. We find that there is nothing inventive or distinctive about combining IRON and PEWTER into IRON PEWTER, where that composite is used for a coating finish which is a combination or mix of iron and pewter coating finishes. In reaching our decision herein, we have accorded little probative value to the material from the third-party websites. It is not clear whether the uses of “Iron Pewter” and “Pewter French Iron” therein are indeed references to a coating finish. It may be that the “Iron” or “Pewter” portions of these terms refer to the composition of the product. In any event, it is well settled that a term need not be in common use in an Ser No. 77325477 7 industry to be descriptive. The mere fact that an applicant is the first to use such term in connection with its goods does not justify registration, where, as here, the term is merely descriptive of applicant’s goods. In re National Shooting Sports Foundation, Inc., 210 USPQ 1018 (TTAB 1983). Decision: The refusal to register under Section 2(e)(1) of the Trademark Act is affirmed.