Sadoru Group, Ltd.

Trademark Trial and Appeal Board

Aug 14, 2012

No. 77941164 (T.T.A.B. Aug. 14, 2012)

Hearing: Mailed:
April 25, 2012 August 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sadoru Group, Ltd.
________

Serial No. 77941164
_______

Roger A. Gilcrest of Schottenstein Zox & Dunn Co., L.P.A.
for Sadoru Group, Ltd.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).1
_______

Before Seeherman, Ritchie and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sadoru Group, Ltd. has appealed from the final refusal
of the trademark examining attorney to register SADORU, in
the stylized form shown below, with SADORU disclaimed, for
“motorcycle parts and accessories, namely motorcycle seats

1 Ms. Hella was responsible for this application at the appeal
stage, writing the examiner’s brief and appearing at the oral
hearing before the Board. A different examining attorney issued
the Office actions.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 77941164
2
and ergonomic motorcycle pads for use with seats.”2 The
application includes the statement, “The English
translation of ‘SADORU’ in the mark is ‘saddle’.”

Registration has been refused pursuant to 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.
Applicant and the examining attorney submitted briefs,
and both appeared at an oral hearing before the Board.
With its appeal brief applicant submitted several third-
party registrations, as well as an article on “Japanese
calligraphy” taken from Wikipedia, that had not previously
been made of record. Trademark Rule 2.142(d) provides that
the record in the application should be complete prior to
the filing of an appeal, and that the Board will ordinarily
not consider additional evidence filed with the Board after
the appeal is filed. However, the examining attorney in
her brief specifically stated that she had no objection to
the Board considering this untimely submitted evidence, and
we have therefore done so.

2 Application Serial No. 77941164, filed February 22, 2010,
based on Section 1(b) of the Trademark Act (intent-to-use).
Ser. No. 77941164
3
The word “sadoru” is, as applicant’s submitted
translation shows, the Japanese word for “saddle.” Under
the doctrine of foreign equivalents, we must consider the
meaning of the mark to those who speak Japanese. See In re
Spirits International N.V., 563 F.3d 1347, 90 USPQ2d 1489,
1491 (Fed. Cir. 2009). The doctrine is applicable in this
case because the record shows that the relevant English
translation is literal and direct, the word comes from a
common, modern language, and there is no contradictory
evidence of another relevant meaning. See TMEP
§1207.01(b)(vi). As applicant has stated in its brief,
“The meaning of the SADORU word approximates to ‘saddle’ in
the Japanese language, and the term itself has been
disclaimed.” Brief, unnumbered p. 4. Thus, applicant does
not dispute that SADORU is at least descriptive. Further,
the evidence shows that “sadoru” is at least highly
descriptive, if not generic, for applicant’s goods, which
include “motorcycle seats.” The examining attorney
submitted definitions of “saddle” as meaning a “seat to be
straddled by the rider of a vehicle (as a bicycle)”3 and
“seat on bicycle or motorcycle: a padded seat for a rider

3 www.merriam-webster.com, submitted as part of May 4, 2010
Office action.
Ser. No. 77941164
4
on a vehicle such as a bicycle, motorcycle, or tractor.”4
Thus, the issue before us is whether the stylization
of the lettering in which SADORU appears creates a separate
and inherently distinctive commercial impression apart from
the word itself, such that the mark as a whole is not
merely descriptive. Although an entire mark cannot be
disclaimed and also registered, nevertheless where the
literal components of a mark are combined in a distinctive
design or display it is possible to disclaim those literal
components and still have a mark which is registrable as a
whole. In re Jackson Hole Ski Corporation, 190 USPQ 175,
176 (TTAB 1976). A display of descriptive or otherwise
unregistrable matter is not registrable on the Principal
Register unless the design features of the asserted mark
create an impression on the purchasers separate and apart
from the impression made by the words themselves, or if it
can be shown by evidence that the particular display which
the applicant has adopted has acquired distinctiveness. In
re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994).
In the present case, applicant has not made a claim of
acquired distinctiveness, and therefore the stylization of

4 Encarta World English Dictionary (2009), submitted as part of
October 22, 2010 Office action.
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Ser. No. 77941164
7
literal portion of the mark. In re Project Five,
Inc., 209 USPQ 423 (TTAB 1980).

for, inter alia, training in plastic facial and
reconstructive surgery tecniques and association
services of promoting the interests of facial
plastic surgeons and reconstructive surgeons and
research in the field of plastic surgery and
reconstructive surgery, FACIAL PLASTIC SURGERY
disclaimed. The Board stated that the display of
the words was “nothing but ordinary in nature and
does not create a commercial impression separate
and apart from the unregistrable components.”
With respect to the underlining in the mark, the
Board indicated that “there is no evidence of
record that specifically points to recognition of
this common and prosaic feature in applicant's
asserted mark as the element which potential
purchasers or users of applicant's services have
come to recognize as the distinctive aspect
indicating origin in applicant.” In re American
Academy of Facial Plastic and Reconstructive
Surgery, 64 USPQ2d 1748, 1755 (TTAB 2002).

for air freight forwarding services, COURIAIRE
disclaimed. The Board stated that the design
features would not be likely to make an
impression on purchasers separate from the
impression made by the word COURIAIRE. In re
Couriaire Express International, Inc., 222 USPQ
365, 366 (TTAB 1984).

Ser. No. 77941164
8
The following marks were found registrable on the
Principal Register, but only upon a showing of acquired
distinctiveness; in other words, the stylization was not
inherently distinctive.

for beer, LITE disclaimed. The Board stated that
the features of the configuration of the
disclaimed word LITE were not of such nature that
they would inherently serve to distinguish
applicant’s mark in its entirety. In re Miller
Brewing Company, 226 USPQ 666, 669 (TTAB 1985).

for smoker’s pipes, PIPE and the representation
of a smoking pipe disclaimed, with registration
sought pursuant to the provisions of Section
2(f), and the Board stating that “applicant is
under a heavy burden to establish that such
designation has become distinctive of its goods
in commerce.” In re Venturi, Inc., 197 USPQ 714,
717 (TTAB 1977).

See, also, In re K-T Zoe Furniture, 16 F.3d 390,
29 USPQ2d 1787 (Fed. Cir. 1994), in which the
applicant sought to register the mark shown below
for custom manufacture of furniture pursuant to
Section 2(f). The Board found that the applicant
had shown acquired distinctiveness only for the
stylized script, and the issue on appeal to the
Court was whether THE SOFA & CHAIR COMPANY had to
be disclaimed. The Court held that the words
and the stylized script of “the sofa & chair
company” are separable elements and that only the
Ser. No. 77941164
9
stylized script in the mark had been shown to
have acquired secondary meaning.

In addition, the following marks were registered on
the Supplemental Register, with either the Board or the
Court finding that the stylization was only capable of
distinguishing the goods, i.e., the stylization was not
inherently distinctive.5

for hair conditioner and hair shampoo, BALSAM
disclaimed. In re The Wella Corporation, 565
F.2d 143, 196 USPQ 7 (CCPA 1977).

for candy bars, YOGURT BAR disclaimed. In re
Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB
1980).

for providing children’s books to schools and
school related organizations for use in school
fundraising programs, SCHOOL BOOK FAIRS, INC.

5 It should be noted that the question of the capability of the
instant applicant’s mark to distinguish its goods is not before
us.
Ser. No. 77941164
10
disclaimed. In re School Book Fairs, Inc., 229
USPQ 556 (TTAB 1986)

And the following mark, applied for on the
Supplemental Register for a plastic dish for supporting
foodstuffs while being cooked in microwave ovens (in other
words, a turntable for use in a microwave), with MICROWAVE
and TURNTABLE disclaimed, was found not to be capable of
functioning as a mark, with the stylization considered
completely ordinary and nondistinctive. In re Anchor
Hocking Corporation, 223 USPQ 85 (TTAB 1984).

On the other hand, the following marks were held to be
registrable on the Principal Register without a showing of
acquired distinctiveness.

for providing skiing resort facilities, JACKSON
HOLE disclaimed. Because of the display of the
letters JH (twice the size of the other letters
and partly joined together), the Board found they
created the visual impression of a monogram, and
their positioning below the other letters had the
effect of highlighting them. In re Jackson Hole
Ski Corporation, supra.
Ser. No. 77941164
11

for components used to construct personal storage
systems. The Board found the tube-like rendition
of the letter “C” in the words “construct” and
“closet” made a striking commercial impression
separate and apart from the word portion,
although the merely descriptive words CONSTRUC-A-
CLOSET were required to be disclaimed. In re
Clutter Control Inc., 231 USPQ 588, 589 (TTAB
1986).

See In re American Academy of Facial Plastic and
Reconstructive Surgery, 64 USPQ2d at 1754-55, for
additional cases involving the distinctiveness of a
stylized word mark consisting of descriptive or generic
literal elements.
Applicant argues that the stylization of its mark
makes it inherently distinctive, asserting, in part, that:
the hand-drawn script creates an impression taken
from the Japanese ink-style script that gives a
collective appearance to the mark of a
distinctive oriental flavor reminiscent of the
ink brush strokes of Japanese (or other Oriental)
calligraphy....” Brief, unnumbered p. 4.

the mark “immediately creates a mental reference
to Japanese, particularly to ancient Japan and
Japanese, and an associated commercial
impression.” Brief, unnumbered p. 5.

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Ser. No. 77941164
13
they do not look like the brushstrokes of Japanese
calligraphy, as shown in the example submitted by
applicant. As a result, consumers are not likely to view
the stylization of SADORU as a Latin alphabet version of
Japanese characters. Further, although the tops of the
letters “dip” to give the upper portion of the mark a
slightly concave shape, the depression is so minimal that
it is not likely to make a significant impression on
consumers. There is no evidence that Japanese words are
generally depicted in such a manner that would support
applicant’s claim that the stylization of the mark conveys
a Japanese or “oriental” impression. On the contrary, the
examples in the Wikipedia article show the characters
written in a vertical fashion, not from left to right with
a concave top to them.
Applicant contends that “the Examining Attorney has
attempted to impose some improper and erroneous form of
‘stylization calculus’” because she has pointed out that
applicant’s proposed mark does not contain as much
stylization as those in other marks that the Board found to
be not inherently distinctive. Brief, unnumbered p. 5.
Applicant claims that the examining attorney’s “analysis is
faulty (i.e., that the fact that the subject mark may be
denied registration simply because some ‘more stylized’
Ser. No. 77941164
14
marks were not afforded Principal Register registration).”
Brief, unnumbered p. 6. Instead, applicant asserts that
the examining attorney “should not compare the subject mark
to relatively ‘more stylized’ marks, but rather consider
the mark as presented.” Id. At the same time, applicant
points to several third-party registrations of stylized
word marks in which the wording has been disclaimed, thus
indicating that the stylization was found to be
distinctive.
As noted, the determination of whether the stylization
of a term that is otherwise unregistrable is a subjective
one, which depends on the individual mark. Because of
this, the fact that examining attorneys have considered the
stylization of other, different marks to be sufficient to
make those marks distinctive is of limited probative value.
Certainly we find more persuasive decisions by a Court or
the Board which give the reasons supporting a finding that
the stylization of a mark is distinctive, or not
distinctive. However, we note that even the registered
marks that applicant has submitted have a more distinctive
stylization than applicant’s mark, examples of which are
shown below:

Ser. No. 77941164
15
Registration No. 3953749 for

registered on the Principal Register, with
CONTOUR PRO disclaimed, for electronic storage
media featuring maps and other geographic
information, has wavy lines inside each letter
representing geographic features and formations;

Registration No. 3681484 for

(colors blue and purple claimed as features of
the mark) registered on the Principal Register
for O-rings, rubber pipe gaskets and other seals,
with SUPERIOR disclaimed, features highly
stylized lettering comprising unusual
combinations of geometric shapes and bars; and

Registration No. 3041101 for

registered on the Principal Register for “wood
carvings, namely design and words cut into wood
creating a 3-dimensional effect,” with WOOD
SCRIPT disclaimed, creates a monogram effect
similar to the JACKSON HOLE mark found
registrable in In re Jackson Hole Ski
Corporation.

In any event, ultimately the decision we make in this
case must be based on the particular facts and record
herein. See In re Nett Designs Inc., 236 F.3d 1339,
Ser. No. 77941164
16
57 USPQ2d 1564 (Fed. Cir. 2001); In re Couriaire Express
International, Inc., 222 USPQ at 366 (“That each case must
be determined on its own facts is a proposition so well
established that no authority need be cited in support of
it”). After considering the case law involving the
registrability of marks consisting of merely descriptive or
generic words depicted in stylized format, and applying it
to the facts of this case, we find that the stylization of
the lettering in which SADORU appears does not create a
separate and inherently distinctive commercial impression
apart from the word itself. Thus, we find that the mark as
a whole is merely descriptive.7
Decision: The refusal of registration is affirmed.

7 We make no comment as to whether applicant’s applied-for
matter is capable of distinguishing its goods, or could, through
use, acquire distinctiveness. Those questions are not before us.