Atico Int'l. USA Inc.

Trademark Trial and Appeal Board

May 31, 2002

No. 76045182 (T.T.A.B. May. 31, 2002)

Mailed: 31 May 2002
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Atico International USA Inc.
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Serial No. 76/045,182
_______
Peter T. Cobrin of Cobrin & Gittes for Atico International
USA Inc.
James M. Marcus, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Walters, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Atico International USA Inc. (applicant) filed an
application to register SUPER ALKALINE (in typed form) on
the Principal Register for goods identified as “batteries”
in International Class 9.1
The examining attorney refused registration under
Section 2(e)(1) on the ground that applicant’s term is
1 Serial No. 76/045,182, filed June 10, 2000. The application
contains an allegation of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76/045,182
2
merely descriptive of the goods. 15 U.S.C. §
1052(2)(e)(1). When the examining attorney made the
refusal to register final, applicant filed a notice of
appeal. Both applicant and the examining attorney have
submitted briefs, but no oral argument was requested.
The examining attorney submitted the following
evidence to show that “the term ALKALINE refers to a type
of battery.” Examining Attorney’s Br. at 4.
The authorities found that when they allowed inmates
to have alkaline batteries, the men peeled the metal
jackets off and made shanks to stab one another.
New York Times, October 15, 2000, p. 76.
A California consumer’s NiCad recharger burst into
flames after he put a rechargeable alkaline battery
into it.
Atlanta Constitution, October 5, 2000, p. 10BE.
The examining attorney also submitted definitions of
“alkali” and “alkaline”2 and copies of registrations for
batteries in which the term “alkaline” was disclaimed. For
the term “super,” the examining attorney introduced a
definition from the same dictionary of “super” as
describing “a product of superior, size, quality, or grade”
or meaning “excellent; first rate.” When these terms are
combined, the examining attorney found that the resulting
term would be merely descriptive because the term SUPER
2American Heritage Dictionary of the English Language, Third
Edition (1992).
Ser. No. 76/045,182
3
ALKALINE merely describes that the “goods are alkaline
batteries of superior grade or quality.” Examining
Attorney’s Br. at 6. As further support for this position,
the examining attorney provided evidence that shows that
the term “super alkaline” is used descriptively in relation
to batteries.
A camera based on a chip can run on a nine-volt super
alkaline battery for 24 hours.
Investor’s Business Daily, October 16, 1996, p. A6.
Minamoto AA super alkaline batteries are the best
choice for digital cameras and any other electronic
item that needs exceptional performance from it’s [sic]
power source.
Batteryhouse.com.
Fuginovelbatteries.com: super alkaline batteries.
Supported by this evidence, the examining attorney
submits that term SUPER ALKALINE is merely descriptive for
applicant’s batteries.
In response to the examining attorney’s refusal to
register, applicant pointed out that the Office has issued
registrations for other allegedly laudatory terms for
batteries (“plus” and “ultra”).3 Applicant, in reply to the
3 In its appeal brief, applicant for the first time refers to 13
marks containing the word “super.” The examining attorney
properly objected to this evidence. Applicant cannot introduce
new evidence on appeal. 37 CFR § 2.142(d). In addition, we do
not take judicial notice of registrations and applications in the
Office nor, even if timely submitted, is it sufficient to simply
include a list of marks with registration and application numbers
to prove that a mark is weak. In re Hub Distributing, Inc., 218
USPQ 284, 285 (TTAB 1983) (“[W]e do not consider a copy of a
Ser. No. 76/045,182
4
examining attorney’s citation of case law to support his
argument that “super” was descriptive for applicant’s
goods, cited additional case law for the opposite
proposition. Applicant maintains that its mark is no more
descriptive than other marks the Office has registered and
case law supports the proposition that SUPER ALKALINE is
not merely descriptive for batteries.
We agree with the examining attorney that the term
SUPER ALKALINE is merely descriptive and, therefore, we
affirm the refusal to register under Section 2(e)(1) of the
Trademark Act.
A term is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
search report to be credible evidence of the existence of the
registrations and the uses listed therein”); See also In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); In re
Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). In regard to this
policy of not considering lists of trademark registrations, this
case amply demonstrates why these registrations should not be
considered. Applicant’s list does not indicate that half of the
registrations are registered under the provisions of Section
2(f), on the Supplemental Register, or with a disclaimer of the
“super” term. Most of the remaining marks are for telescoped or
unitary terms or the words contain a significant design.
Therefore, these registrations would provide little, if any,
support for registering applicant’s term.
Ser. No. 76/045,182
5
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). We
look at the term in relation to the goods or services, and
not in the abstract, when we consider whether the term is
descriptive. Abcor, 588 F.2d at 814, 200 USPQ at 218.
Courts have long held that to be “merely descriptive,” a
term need only describe a single significant quality or
property of the goods. In re Gyulay, 820 F.2d 1216, 1217,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp.
v. International Nickel Co., 262 F.2d 806, 807, 120 USPQ
293, 294 (CCPA 1959).
We start by noting that there appears to be little
serious dispute that “alkaline” describes a type of
battery. The only question then is whether the addition of
the term “super” creates a mark that is no longer merely
descriptive of the goods. Both applicant and the examining
attorney cite many cases that discuss the term “super” and
whether marks containing that word are suggestive or
descriptive. Applicant argues that “the proposed mark is
not merely a combination of the superlative SUPER with the
name of the identified goods.” Applicant’s Reply Br. at 3.
Applicant relies specifically on In re Occidental Petroleum
Corp., 167 USPQ 128 (TTAB 1970) (SUPER IRON not merely
descriptive for a soil supplement) and In re Ralston Purina
Co., 191 USPQ 237 (TTAB 1976) (RALSTON SUPER SLUSH not
Ser. No. 76/045,182
6
merely descriptive for a slush type drink). On the other
hand, the examining attorney relies on, inter alia, In re
United States Steel Corp., 225 USPQ 750 (TTAB 1985)
(SUPEROPE descriptive for wire rope); In re Carter-Wallace,
Inc., 222 USPQ 729 (TTAB 1984) (SUPER GEL is an apt
descriptive name for lathering gel for shaving); In re
Samuel Moore & Co., 195 USPQ 237 (TTAB 1977) (SUPERHOSE!
merely descriptive for hydraulic hose made of synthetic
resin); and In re Diamond National Corp., 133 USPQ 344
(TTAB 1962) (SUPER CUSHION merely descriptive for egg
cartons).
It is clear that “the term ‘SUPER’ has been held to be
both descriptive and suggestive.” Ralston, 191 USPQ at
238. “[T]he context within which the ‘SUPER’ is used has a
great influence on which side of the vague and hazy, but
legally determinative, suggestive boundary the word falls
in any particular case.” In re General Tire & Rubber Co.,
194 USPQ 491, 494 (TTAB 1977). In General Tire, the Board
explained that in Ralston there was no indication that
slush was sold in different grades of quality and “the
reach of ‘SUPER,’ as rights therein might impinge on
competitors, was limited by its position in relation to the
primary mark ‘RALSTON.’” Id. Therefore, we reject
applicant’s argument that “Super” is merely descriptive
Ser. No. 76/045,182
7
only when it is used in connection with the name of the
goods. See General Tire, 194 USPQ at 494 (“’SUPER,’ in
this context [SUPER STEEL RADIAL for tires] reinforces the
descriptive connotation of the whole expression”); In re
Consolidated Cigar Co., 35 USPQ2d 1290, 1295 (TTAB 1995)
(“[T]he expression ‘SUPER BUY’ immediately describes an
essential characteristic or feature, namely, the superior
worth or high value of the products”).
Next, we look at the record in this particular case.
While it is clear that there are “alkaline batteries,”
there is also evidence that there are “super alkaline
batteries.”
A camera based on a chip can run on a nine-volt super
alkaline battery for 24 hours.
Investor’s Business Daily, October 16, 1996, p. A6.
Minamoto AA super alkaline batteries are the best
choice for digital cameras and any other electronic
item that needs exceptional performance form it’s power
source.
Batteryhouse.com.
Fuginovelbatteries.com: super alkaline batteries.
In addition as also shown by the record, batteries are
distinguished by whether they are “super alkaline” or
simply “alkaline” batteries.
See batteryhouse.com:
Alkaline
- AAA super alkaline
- AA super alkaline
Ser. No. 76/045,182
8
- AAA alkaline
- AA alkaline
- 9 volt alkaline
Unlike the slush in Ralston, this is a case where “super”
is used in relation to batteries to describe different
types or grades of alkaline batteries and, therefore,
applicant’s term SUPER ALKALINE is merely descriptive of
particular batteries.
Applicant also argues that there are three
registrations for other registrations for different marks
(ALKALINE PLUS, ULTRA ALKALINE and PLUS ALKALINE) that
support its argument that its mark is not merely
descriptive. First, the mere fact that an applicant can
point to three registrations (two apparently owned by the
same party for the same mark in reverse order) hardly
demonstrates that the applicant’s mark for different words
is not descriptive. See Nett Designs, 57 USPQ2d at 1566
(“Even if some registrations had some characteristics
similar to Nett Designs’ application, the PTO’s allowance
of such prior registrations does not bind the Board or this
court”). Each case must be decided on its own merits and
we do not have the files of those cases in front of us to
explain why those marks issued. It is particularly
inappropriate to attempt to make a determination about
descriptiveness by comparing the word to different terms.
Ser. No. 76/045,182
9
Accord In re Seats, Inc., 757 F.2d 274, 225 USPQ 364, 368
(Fed. Cir. 1985) (“Whether terms not sought to be
registered could or could not acquire distinctiveness is
irrelevant”); In re Belanger, Inc., 218 USPQ 742, 744 (TTAB
1983) (“The notion … would lead to the absurd result of
automatically rendering as weak, for example, terms such as
‘choice,’ ‘select,’ ‘elite,’ ‘tops’ just because ‘BEST’ has
been held to be laudatory. Such simplistic formulae have
no place in our trademark jurisprudence”).4 Therefore, the
fact that the Office may have issued registrations to two
other parties for different marks does not provide any
compelling reason to find that applicant’s term is not
descriptive of its goods.
The examining attorney’s evidence supports the
conclusion that the term SUPER ALKALINE merely describes
applicant’s batteries, and the examining attorney’s refusal
to register is appropriate.
Decision: The examining attorney’s refusal to
register the term SUPER ALKALINE on the ground that it is
merely descriptive of the identified goods is affirmed.
4 We note that the terms “plus” and “ultra” have not necessarily
been treated the same as “super” in prior decisions. Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983)
(“The term ‘PLUS’ is, in our view, a highly suggestive term as
applied to most classes of goods”); In re Sunmarks Inc., 32
USPQ2d 1470, 1472 (TTAB 1994) (“We also recognize that ‘ultra’ is
a laudatorily suggestive word”).