Meramec Group, Inc.

Trademark Trial and Appeal Board

Aug 15, 2001

No. 75430345 (T.T.A.B. Aug. 15, 2001)

8/15/01

Paper No. 10
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Meramec Group, Inc.
________

Serial No. 75/430,345
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Paul M. Denk for Meramec Group, Inc.

Mary Rossman, Trademark Examining Attorney, Law Office 9
(Ronald Sussman, Managing Attorney).
_______

Before Simms, Cissel and Quinn, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On February 6, 1998, applicant filed the above-
identified application to register the mark "INDUSTRIAL
STRENGTH COMFORT" for "footwear components," in Class 25.
The basis for the application was applicant’s assertion
that it possessed a bona fide intention to use the mark on
these goods in commerce.
The Examining Attorney refused registration under two
different sections of the Lanham Act and made several
requirements. Registration was refused under Section 2(d)
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/430,345
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of the Lanham Act on the ground that the mark applicant
seeks to register so resembles the mark "INDUSTRIAL
STRENGTH," which is registered1 for "orthopedic braces," in
Class 10, that confusion would be likely if applicant were
to use its mark in connection with footwear components.
Registration was also refused under Section 2(e)(1) of the
Act on the ground that, as applied to footwear components,
applicant’s mark is merely descriptive. The Examining
Attorney also required applicant to provide additional
information concerning the goods with which applicant
intends to use the mark it seeks to register, including
submission of photographs and advertisements or promotional
materials for goods of the same type. She also advised
applicant that the identification-of-goods clause in the
application as filed is indefinite, and applicant was
required to amend the identification to specify the
commercial name of each particular footwear component
referred to in the application. Additionally, applicant
was required to claim ownership of two other registrations
that it appeared to own.
In support of the refusal based on likelihood of

1 Reg. No. 1,846, 639, issued on the Principal Register to Chase
Ergonomics Inc. on July 26, 1994; affidavit under Sections 8 and
15 accepted and acknowledged.
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confusion, the Examining Attorney attached copies of other
registrations owned by applicant which show that applicant
uses other marks on orthopedic back supports. In support
of the refusal based on mere descriptiveness, the Examining
Attorney attached copies of a number of third-party
registrations wherein the term "INDUSTRIAL STRENGTH" is
either disclaimed or is registered under the provisions of
Section 2(f) of the Act based on a claim of acquired
distinctiveness.
In response to the first Office Action, applicant
amended the application to claim ownership of its two prior
registrations and provided argument with respect to both
the refusal based on descriptiveness and the refusal based
on likelihood of confusion. Applicant failed to comply,
however, with either the requirement for amendment to the
identification-of-goods clause or the requirement to submit
photographs, advertising and promotional materials for
goods of the same type as those with which applicant
intends to use the mark. Applicant did, however, submit
copies of two 1999 decisions by the Trademark Trial and
Appeal Board, but each of these was specifically designated
as “not citable as precedent," so we have not considered
either of these cases.
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With her second Office Action, the Examining Attorney
made final the requirements for amendment to the
identification-of-goods clause and for submission of
photographs and samples of advertisements or promotional
materials for goods of the same type. The refusals to
register based on Sections 2(d) and 2(e)(1) of the Act were
also made final.
Many additional materials were made of record with
this action, including dictionary definitions of
“industrial,” “strength” and “comfort”; excerpts from
published articles retrieved from the Nexis database of
publications showing the term “industrial strength” used in
connection with a variety of products, including shoes,
boots and components for shoes and boots, and that there is
a retail market for orthopedic braces and supports; a
third-party registration wherein the goods listed include
arch supports, foot supports, heel supports, heel cups, and
inner soles, as well as wrist supports, elbow supports and
elastic body wraps for therapeutic use; excerpts from
Internet web sites; copies of third-party registrations
wherein the goods are identified as footwear and the word
“comfort” is disclaimed or the registration is either on
the Supplemental Register on the Principal Register under
the provisions of Section 2(f) of the Act; a dictionary
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definition of the word “brace” as “an orthopedic appliance
used to support, align, or hold a bodily part in the
correct position”; an application and registrations owned
by the owner of the cited registration wherein the goods
are designated as “orthopedic back supports” and
“orthopedic braces and elastic wraps”; a promotional sheet
for registrant’s back supports, wrist braces and wraps;
copies from the web site sharperimage.com which advertises
both orthopedic supports and heel cushion inserts for
footwear; and a copy of an advertisement from another
catalog business offering magnetic insoles, magnetic knee
supports, insoles, back supports, and neck and shoulder
wraps.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs on
appeal2, and applicant filed a reply brief, but did not
request an oral hearing before the Board.
Based on careful consideration of the written record
and arguments presented by applicant and the Examining
Attorney in light of the relevant legal precedents in

2 The Examining Attorney objected to the submission of three
prior registrations with applicant's brief on appeal. The
objection is sustained. Trademark Rule 2.142(d). We have not
considered this evidence. Moreover, even if we had considered
them, these registrations would not have established that
applicant's mark is registrable.
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connection with the issues before us, we hold that
registration to applicant must be refused because, although
the refusal based on descriptiveness is not well taken, we
must affirm the refusal based on likelihood of confusion as
well as the requirements for amendment of the
identification-of-goods clause and for submission of
photographs and advertising and promotional materials for
goods of the same type.
Turning first to the refusal under Section 2(e)(1) of
the Act, we note that the materials of record clearly
establish that the terms "INDUSTRIAL STRENGTH" and
"COMFORT" are each merely descriptive of components for
footwear because each term identifies a desirable
characteristic or feature of such goods. In re Bright-
Crest Ltd., 204 USPQ 591 (TTAB 1979). When these terms are
combined, however, the combination results in an unexpected
incongruity that removes the mark from the proscription of
Section 2(e)(1). Whereas "INDUSTRIAL STRENGTH" connotes
that the goods sold thereunder possess superior durability,
the term "COMFORT," in connection with components for
footwear, would be understood to mean that the goods
possess "the capacity to give physical ease and well-
being," as indicated by the dictionary definition which is
of record.
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We find persuasive applicant's argument that combining
these two descriptive terms results in a mark which does
more than merely describe the goods identified in the
application. In In re Colonial Stores, Inc., 394 F.2d 549,
157 USPQ 382 (CCPA 1968), the mark “SUGAR & SPICE” was
found to evoke a commercial impression which was more than
merely descriptive of the bakery products with which the
mark was used in view of the double entendre association
with the nursery rhyme phrase. In a similar sense, the
mark sought to be registered in the instant application
combines two terms which describe features or
characteristics of the goods in question, but the
combination results in something in addition to the
combined descriptive connotations of the component terms.
There is no evidence that “INDUSTRIAL STRENGTH” and
“COMFORT” are ever used together by anyone else in this
field, either descriptively or as source identifiers. The
two terms together create an unexpected, unusual
juxtaposition of what could be perceived as mutually
exclusive characteristics for footwear components:
industrial-type durability and comfort, i.e., “hard” and
“soft.” Moreover, if we were left with any doubt about the
descriptiveness of a term in an ex parte appeal, such doubt
would necessarily be resolved in favor of the applicant.
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In re Bliss & Laughlin Industries, Inc., 198 USPQ 127 (TTAB
1978). Accordingly, the refusal to register based on
Section 2(e)(1) of the Act is not well taken.
The refusal to register based on Section 2(d) the Act,
however, is plainly supported by the record, and applicant
has provided no acceptable explanation for its failure
provide the required materials with regard to similar goods
made by others or to comply with the requirement for
amendment to the identification-of-goods clause, so this
application will not proceed to publication.
With regard to the refusal based on likelihood of
confusion, the Examining Attorney has met her burden of
establishing that applicant's mark is similar to the cited
registered mark and that the goods set forth in the
application are commercially related to the products
identified in the registration. The above-referenced
materials submitted by the Examining Attorney show that
consumers have a basis upon which to expect that footwear
components and orthopedic braces sold under similar marks
emanate from a common source. The marks in question create
similar commercial impressions by virtue of the fact that
applicant seeks to register the entire registered mark, to
which it has added only the merely descriptive term
"COMFORT." As the Examining Attorney points out, the
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general rule is that the likelihood of confusion between
otherwise similar marks is not avoided by merely adding or
deleting wording that is descriptive in relation to the
goods identified in the application. Coca-Cola Bottling
Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975). The descriptive word "COMFORT" in
applicant's mark is insufficient to distinguish between
these marks. Consumers familiar with the registered mark
in connection with orthopedic braces are likely to view the
mark applicant seeks to register as an indication that
applicant’s footwear components are comfortable “INDUSTRIAL
STRENGTH” goods produced by the same entity that produces
the “INDUSTRIAL STRENGTH” orthopedic braces with which they
are familiar. Moreover, as the Examining Attorney points
out, the fact that both applicant's mark and the cited
registered mark are both presented in typewritten form
means that the registrant may present "INDUSTRIAL STRENGTH"
in the same form to be used by applicant, and applicant
could present the first term in its mark, "INDUSTRIAL
STRENGTH," in the same style of lettering that registrant
uses for its mark, showing the word "COMFORT" in a clearly
subordinate fashion, on another line and in smaller type.
Under these circumstances, the similarity of the marks
at issue in this appeal is even more evident. In view of
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the established relatedness of the goods set forth in the
application and the cited registration, respectively,
confusion would be likely. Accordingly, the refusal to
register under Section 2(d) of the Act is well taken and
must be affirmed.
As noted above, applicant has failed to submit the
required photos or advertising relating to similar products
made by others. Applicant did not address either of these
issues in its initial brief, but in its reply brief,
applicant stated that in view of the fact that the
application is based not on use, but rather on the intent
to use, applicant does not yet have samples of advertising
or promotional materials. As noted throughout the
prosecution of this application, however, the Examining
Attorney understood that applicant is not claiming to have
used this mark yet, but asked applicant to submit this
information with regard to similar products made by others.
Applicant never seemed to understand this point, but the
Examining Attorney was quite clear. Trademark Rule 2.61(b)
permits the Examining Attorney to make such a requirement.
Applicant did not comply. See also TMEP Sections
1105.01(a)(iv) and 1105.02.
In a similar sense, the requirement for a definite
statement of the particular footwear components with which
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applicant intends to use the mark was clear and
unambiguous. Applicant failed to address this issue, in
its brief or even in its reply brief. Trademark Rule
2.71(a) allows the Examining Attorney to make such a
requirement. Accordingly, both the requirement for a more
definite identification-of-goods clause and the requirement
for information regarding similar products made by others
are affirmed.
In summary, although the refusal to register under
Section 2(e)(1) is reversed, the refusal to register under
Section 2(d) is affirmed, as are the two requirements
discussed above.

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