Sagoma Plastics, Inc.

Trademark Trial and Appeal Board

Mar 27, 2006

No. 76544524 (T.T.A.B. Mar. 27, 2006)

Mailed:
March 27, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sagoma Plastics, Inc.
________

Serial No. 76544524
_______

James C. Wray and Matthew J. Laskoski for Sagoma Plastics,
Inc.

S. Michael Gaafar, Trademark Examining Attorney, Law Office
116 (M.L. Hershkowitz, Managing Attorney).
_______

Before Seeherman, Hairston and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sagoma Plastics, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register THE
CLIP as a trademark for goods which are identified as
“holder mountings in books, book bindings, book binder,
leaf and package connectors, page mounts and books with
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76544524
2
rigid pages for holding objects.”1 The Examining Attorney
has refused registration pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the grounds that
applicant’s mark is merely descriptive of its identified
goods, and, citing TMEP §1402.01, that the identification
of goods is indefinite. This section of the Trademark
Manual of Examining Procedure in turn cites Sections
1(a)(2) and 1(b)(2) of the Trademark Act, and Trademark
Rule 2.32(a)(6).2
The appeal has been fully briefed. Applicant did not
request an oral hearing.
Before discussing the issues on appeal, we must first
address the question of what the present identification of
goods is. The identification of goods has undergone a
series of amendments, as detailed in the Examining
Attorney’s brief.3 At the time applicant and the Examining

1 Application Serial No. 76544524, filed September 12, 2003,
based on an asserted bona fide intent to use the mark in
commerce.
2 The final refusal also included the alternative refusal that,
if the mark were not merely descriptive of the goods, it was
deceptively misdescriptive of them, and also made final a request
for information about the goods. Applicant subsequently
submitted the required information, and in his brief the
Examining Attorney withdrew both this requirement and the refusal
based on deceptive misdescriptiveness. Accordingly, these are
not issues on appeal.
3 In response to the Examining Attorney’s finding that the
original identification was indefinite, applicant filed an
amendment with its response of August 25, 2004. When this
amendment was found indefinite in the final Office action mailed
Ser No. 76544524
3
Attorney filed their briefs, the operative identification
was the one set forth at the beginning of this opinion.
Then, as part of its reply brief, on page 2 of its
“Remarks” section, applicant proposed another amendment of
the identification “in order to clarify the goods.” We
note that this is not the proper way to have an amendment
to the identification considered at that stage of the
appeal. Rather, applicant should have filed, by separate
paper, a “Request for Remand,” which should also have
included a showing of good cause for remanding the
application. See TBMP §1209.04. However, despite
applicant’s failure to follow proper procedure, the Board
remanded the application to the Examining Attorney to
consider the proposed amendment. That remand was for the
limited purpose of having the Examining Attorney consider
the amendment, and the order stated that if the amendment
was not persuasive the Examining Attorney was simply to
issue an Office action to that effect, and return the file
to the Board. On October 20, 2005, the Examining Attorney
issued an action in which he stated that the proposed
amendment was unpersuasive.

October 21, 2004, applicant filed, with its request for
reconsideration dated March 21, 2005, a further amendment.
Ser No. 76544524
4
Because the Examining Attorney did not accept the
proposed amendment, the identification of goods remains as
it was in the amendment submitted by applicant on March 21,
2005. As previously noted, this is the amendment that was
in effect when the appeal briefs were filed. The amendment
proposed in applicant’s reply brief has been given no
effect, since the Examining Attorney has not had an
opportunity to present in his brief his reasons as to why
the proposed identification is indefinite, or his reasons
as to why the mark is merely descriptive with respect to
this identification.4
We now turn to the issue of whether applicant’s mark
is merely descriptive of its goods. A mark is merely
descriptive, and therefore prohibited from registration by
Section 2(e)(1), if it immediately conveys knowledge of the
ingredients, qualities, or characteristics of the goods
with which it is used. In re Gyulay, 810 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). The determination of mere
descriptiveness must be made not in the abstract or on the

4 We note that in the Examining Attorney’s brief, the
identification of goods he lists on page 1 is slightly different
from the actual identification submitted by applicant in its
March 21, 2005 amendment. The Examining Attorney, in discussing
the requirement for an acceptable identification at p. 12 of his
brief, has set forth the correct identification. Therefore,
there is no question that the Examining Attorney treated the
March 21, 2005 amendment as the operative one.

Ser No. 76544524
5
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978).
In support of the refusal of registration, the
Examining Attorney points to certain dictionary definitions
which were made of record, as well as other definitions
submitted with his appeal brief, which we judicially
notice.5 These submissions include the following definition
of “clip,” taken from The American Heritage Dictionary of
the English Language, 4th ed., © 2000, and provided by
Bartleby.com:
Clip: n. 1. Any of various devices for
gripping or holding things together, a
clasp or fastener. 2. A piece of
jewelry that fastens with a clasp or
clip; a brooch. 3. A cartridge clip.

v. 1. To fasten with or as if with a
clip; hold tightly. 2. Archaic To
embrace or encompass

In addition, the Examining Attorney points to the
materials submitted by applicant in response to the

5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Ser No. 76544524
6
Examining Attorney’s request for product information. In
particular, an article from the March 2004 issue of
“Injection Molding Magazine” about applicant’s company
features applicant’s “package for optical disks that’s
designed with the familiar look and feel of a conventional
book. Sagoma calls it ‘The Clip Binding System’ (TCBS).”
A caption next to a depiction of the product states that
“Sagoma’s TCBS combines the attractive look and feel of
traditional book binding with durable, high-quality plastic
pages.” The article describes the product as using
custom-colored disk—holding “pages”
molded from ABS, PC, or HIPS—materials
that are stronger than the crystal PS
used in conventional jewel boxes.
Flexible PP clips bind the pages.
(emphasis added)

Although applicant’s identification does not make
specific reference to packages for optical disks, applicant
did submit the material in response to the Examining
Attorney’s request for information about its goods and
therefore we can consider it as indicating the nature of
the goods which are the subject of this application.
Further, applicant’s identification, which includes “books
with rigid pages for holding objects,” could encompass such
packages. In particular, the objects held by the books
with rigid pages could be optical disks. In this
Ser No. 76544524
7
connection, we note applicant’s statement in its reply
brief that its goods “are devices to fasten rigid pages to
create a book format storage unit,” and that “optical disks
are simply one example of storage possibilities.” Reply
brief, p. 2.
The description of applicant’s product in “Injection
Molding Magazine” uses the word “clips” to describe the
objects binding the pages in applicant’s binding system.
Whether applicant itself used this term in furnishing the
information about its product, or the writer of the article
decided to use the term, the use of the term shows that THE
CLIP is merely descriptive of a significant feature of
applicant’s goods, namely, its bindings and books with
rigid pages for holding objects use clips to bind the
pages. Accordingly, the refusal of registration on the
ground that the mark is merely descriptive is affirmed.
In reaching this conclusion we have considered
applicant’s various arguments. Applicant asserts that THE
CLIP does not give an immediate idea of the product to the
average purchaser, but that such purchaser “will have to
invest imagination and time to figure out what the mark
actually represents.” Brief, pp. 2-3. However, as
applicant itself has recognized, and as we have stated in
this opinion, the determination of mere descriptiveness
Ser No. 76544524
8
must not be made in the abstract. Thus, the question is
not whether a purchaser can guess from seeing the mark what
the goods will be, but whether, upon seeing the mark in
connection with the goods, the purchaser will immediately
understand the mark as referring to a characteristic of the
goods. The evidence from “Injection Molding Magazine,”
which describes applicant’s goods as using “clips,”
establishes that THE CLIP will immediately convey to
purchasers information about a significant characteristic
of the goods.
Applicant also points to the fact that “clip” has a
variety of meanings, including a piece of jewelry and a
cartridge clip. Again, however, the mark must be viewed in
relation to the goods. When used in connection with the
identified goods, consumers will not ascribe the dictionary
meanings of a piece of jewelry or a cartridge clip; rather,
they will view THE CLIP as referring to “a device for
gripping or holding things together, a clasp or fastener.”
Applicant also attempts to distinguish the various
cases cited by the Examining Attorney based on their
factual situations. However, it is clear that, just as we
have done in this opinion, the Examining Attorney cited
these cases in support of the trademark principle which he
was asserting.
Ser No. 76544524
9
Applicant has posed a series of questions based on
tests that determine whether a mark is merely descriptive.
For example, applicant asks, “Does the mark directly convey
an unequivocal idea” and answers this question, “No. The
mark is suggestive.” Brief, p. 6. Applicant’s unsupported
statements, however, do not show that its mark is not
merely descriptive, and they have no persuasive value.
With respect to the question posed by applicant, “Even
though the mark may tell something, is it likely to conjure
up some other connotation, e.g., Sugar & Spice, Polly
Pitcher?”, applicant answers “Yes. THE CLIP is
suggestive.” Brief, p. 6. However, we disagree that THE
CLIP for the identified goods is similar to the situations
in In re Colonial Stores Incorporated, 394 F.2d 549, 157
USPQ 382 (CCPA 1968) (the SUGAR & SPICE case) and
Blisscraft of Hollywood v. United Plastics Company, 294
F.2d 694, 131 USPQ 55 (2d Cir. 1961)(the POLY PITCHER
case). In those cases, the marks had a double entendre,
i.e., a meaning totally different from their descriptive
meaning which made them not merely descriptive. In this
case, on the other hand, as used in connection with the
identified goods THE CLIP has only the meaning of the clips
that are used in the bindings of the products.
Ser No. 76544524
10
Finally, applicant asserts that “nothing in the record
suggests that others in the relevant field have used or
would need to use THE CLIP to describe their goods.”
Brief, p. 6. However, as the Examining Attorney points
out, “the fact that an applicant may be the first and sole
user of a merely descriptive designation does not justify
registration where the evidence shows that the term is
merely descriptive of the identified goods,” citing In re
Acuson, 225 USPQ 790 (TTAB 1985) and In re National
Shooting Sports Foundation, Inc., 210 USPQ 1018 (TTAB
1983). Brief, p. 9.
The second issue on appeal is the acceptability of
applicant’s identification of goods: “holder mountings in
books, book bindings, book binder, leaf and package
connectors, page mounts and books with rigid pages for
holding objects.” Applicant did not address this basis for
refusal in its appeal brief. The Examining Attorney, in
his brief, asserts that this identification does not
provide the common commercial name for the holder
mountings. The Examining Attorney also takes the position
that the subject matter of the books is “for holding
objects,” apparently because in the Office actions
applicant was asked to amend the identification for the
“books with rigid pages” by indicating the subject matter
Ser No. 76544524
11
of the books. The Examining Attorney contends that
applicant’s goods, “books with rigid pages for holding
objects” should be identified as a type of storage unit and
not a type of book. Based on the informational material
submitted by applicant, the Examining Attorney asserts that
because applicant’s goods are used for storage of optical
disks, the goods are a type of storage unit and not a book
and should be identified as “optical disk packaging in the
form of a book with rigid pages” and classified in Class 9,
where storage items are placed, rather than in Class 16.
Applicant has responded to this latter point in its
reply brief, stating that the goods are not merely optical
disk storage devices, but that “the mountings, connectors
and binders are capable of holding other rigid pages that
in turn hold materials other than optical disks.” Reply
brief, p. 2. Applicant further states that “the goods are
mountings, connectors and binders used to create general
purpose storage devices in a book format.” Id.
It is clear from the above discussion that the current
identification does not indicate the goods with the
requisite degree of definiteness. From applicant’s
comments in its reply brief (and the description in the
magazine article), it appears that applicant’s goods are a
system consisting of mountings, connectors and binders
Ser No. 76544524
12
which are used to create a book-like storage device.
“Holder mountings in books, book bindings, book binder,
leaf and package connectors, page mounts and books with
rigid pages for holding objects” does not adequately
identify this system. Moreover, although applicant’s goods
are a storage device that has a book format, they would not
be considered “books with rigid pages.”
Accordingly, we agree with the Examining Attorney that
the present identification of goods is indefinite.
Decision: The refusal on the ground that the mark is
merely descriptive of the goods and the requirement for an
acceptable identification of goods are affirmed.