Cohber Press, Inc.

Trademark Trial and Appeal Board

Nov 15, 2007

No. 78919789 (T.T.A.B. Nov. 15, 2007)

Mailed:
November 15, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cohber Press, Inc.
________

Serial No. 78919789
_______

Brian B. Shaw of Harter, Secrest & Emery for Cohber Press,
Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Cohber Press, Inc. filed a use-based application for
registration of the mark ARCTIC ART in standard character
form for “coated paper for printing,” in Class 16 (Serial
No. 78919789). The Trademark Examining Attorney finally
refused registration on two grounds. First, the Examining
Attorney refused registration on the ground that ARCTIC
ART, when used in connection with “coated paper for
printing,” so resembles the mark ARCTIC WHITE for “bond,
onionskin, wedding, bristol, cover and text paper” as to be
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78919789
2
likely to cause confusion. Since Registration No. 1431100
for the mark ARCTIC WHITE was registered on March 3, 1987,
the registrant was allowed until March 3, 2007 to file a
renewal application under Section 9 of the Trademark Act of
1946, 15 U.S.C. §1059, and a declaration or affidavit of
use under Section 8 of the Trademark Act of 1946, 15 U.S.C.
§1058. The Trademark Act allows a registrant a six-month
grace period, or in this case until September 3, 2007, to
file a late renewal application and declaration or
affidavit of use. Registrant has not filed its renewal
application or declaration of use. Accordingly, the cited
registration will be cancelled in due course. In view
thereof, action in this appeal will be suspended pending
the cancellation of the cited registration.
The Examining Attorney also issued a requirement that
applicant disclaim the exclusive right to use the word
“art” on the ground that “art” is merely descriptive. See
Section 6(a) of the Trademark Act of 1946, 15 U.S.C.
§1056(a). The Examining Attorney contends that the word
“art” is merely descriptive when used in connection with
“coated paper for printing” because the word “art” refers
to a type of paper (i.e., art paper). The Examining
Attorney introduced the following evidence in support of
the disclaimer requirement:
Serial No. 78919789
3
1. Three (3) third-party registrations for marks
that include the word “art” for paper registered either on
the Supplemental Register or on the Principal Register with
a disclaimer of the exclusive right to use the word “art.”1
These are:
A. Registration No. 1419594 (Supplemental
Register) for the mark SATIN ART for “paper
goods, namely, clay-coated art paper and
printing paper”;
B. Registration No. 2055353 (Principal
Register) for the mark PARSONS RENAISSANCE
ART PAPER for “paper goods, namely, paper
used for letterpress, offset, gravure and
silk-screen print applications” with a
disclaimer of the exclusive right to use
“art paper”; and,
C. Registration No. 2851768 (Principal
Register) for the mark AURORA ART for
“coated offset printing paper” with a
disclaimer of the exclusive right to use
“art”;

1 The Examining Attorney submitted ten (10) registrations.
However, only the registrations listed above were relevant.
Registration No. 2851768 for the mark AURORA ART was listed twice
and the other registrations were for art supplies, arts and
crafts material, or gift items made of paper.
Serial No. 78919789
4
2. Four (4) third-party registrations for marks that
include “art paper” in the description of goods;
3. An excerpt from the Epson website (www.epson.com)
demonstrating that “art paper” is a type of coated paper;
4. The hit list from a Google search engine search
for “art paper” demonstrating that “art paper” is a type of
paper;
5. A definition of the term “coated art paper” from
A Dictionary of Descriptive Terminology from the
Bookbinding and the Conservation of Books website reading
as follow:
A coated paper particularly suited for
printing, especially halftones where
definition and detail in shading and
highlights are an essential
consideration. It is usually a paper
of good quality, with a high brightness
and a glossy, highly uniform printing
surface.

(http://palimpesest.stamford.edu);
6. An excerpt from the Alibaba.com website
requesting bids for the sale of two-sided coated art paper;
7. An excerpt from the TradeKey.com website for art
paper exporters, suppliers, manufacturers, and
distributors; and,
8. An excerpt from the website of the Natural
Resources Council of Maine (www.nrcm.org) listing
Serial No. 78919789
5
Scheufelen Job Parilux as a brand of premium coated art
paper.
On the other hand, applicant contends that the word
“art” as used in the ARCTIC ART mark is not merely
descriptive because ARCTIC ART is a unitary mark, and
therefore a disclaimer is not necessary. Applicant argues
that “consumers will not break the components of ARCTIC ART
into its elements due to the alliterative rhythm of the
‘ar’ beginning each word. Consumers will not perceive the
mark as two separate components, but as one unitary mark.”
In addition, applicant asserts that the mark conveys the
commercial impression of “art” of the “arctic,” not arctic
art paper, because the word “art” is a noun modified by the
adjective “arctic.” (Applicant’s Brief, pp. 8-9).
Section 6(a) of the Trademark Act of 1946, provides in
part that an applicant may disclaim the exclusive right to
use an unregistrable component of an otherwise registrable
mark. The purpose of the disclaimer is to make it clear,
if it might otherwise be misunderstood, that the applicant
is not claiming the exclusive right to use the
unregistrable component of the mark. In re Kraft, Inc.,
218 USPQ 571, 572-573 (TTAB 1983). When the composite mark
is unitary in nature, no disclaimer is required. Id.
Serial No. 78919789
6
A unitary mark is a mark with multiple elements that
create a single and distinct commercial impression separate
and apart from the meaning of its constituent elements.
Dena Corp. v. Belvedere International Inc., 950 F.2d 1555,
21 USPQ2d 1047, 1052 (Fed. Cir. 1991). See also, In re
Kraft, Inc., supra (the elements of a unitary mark are so
integrated or merged that they cannot be regarded as
separate elements, and it is obvious that no claim is made
other than to the entire mark). In Kraft, the Board
explained that a unitary mark could be created “where the
words which have been put together function as a unit, with
each relating to the other rather than directly to the
goods.” 218 USPQ at 573. See also In re EBS Data
Processing, Inc., 212 USPQ 964, 966 (TTAB 1981).
To determine whether a composite mark is unitary, the
Board must determine “how the average purchaser would
encounter the mark under normal marketing of such goods and
also . . . what the reaction of the average purchaser would
be to this display of the mark.” Id, quoting In re Magic
Muffler Service, 184 USPQ 125, 126 (TTAB 1974). This can
best be accomplished by looking at the specimen filed with
the application because it shows how the mark is used in
connection with the goods. In re Magic Muffler Service,
Serial No. 78919789
7
supra. A label used by applicant displaying the mark
sought to be registered is set forth below.

In the present case, we have no doubt that the word
“art” is merely descriptive of a type of paper (i.e., art
paper). However, the descriptive significance of the word
“art” is lost in the mark as a whole. The mark ARCTIC ART
has an alliterative cadence that encourages potential
consumers encountering the mark to perceive it as a whole.
Moreover, we agree with applicant that the mark conveys the
commercial impression of “art” of the “arctic” because the
word “art” is a noun modified by the adjective “arctic.”
In other words, as shown in the specimen of use, consumers
will perceive applicant’s mark as ARCTIC ART brand premium
coated paper, not ARCTIC brand art paper. See In re J. R.
Carlson Laboratories, Inc., 183 USPQ 509, 511 (TTAB 1974)
(consumers will call for applicant’s product as E GEM
notwithstanding the fact that they would recognize the
descriptive significance of the letter “E”). For these
reasons, we believe that purchasers will not go through the
mental process of parsing the mark ARCTIC ART into its
Serial No. 78919789
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component parts, but will regard it as a unitary mark.
Under the circumstances presented by the record before us,
the registration of the mark ARCTIC ART does not create or
recognize any rights in the individual elements of the mark
apart from the mark as a whole, and it will not preclude
others from using the word “art” in connection with “coated
paper for printing” or art paper. Therefore, we conclude
that the requirement for a disclaimer of the word “art” is
not necessary.
Decision: The requirement for a disclaimer is
reversed.
Further action in this appeal is suspended pending the
cancellation of Registration No. 1431100 for the mark
ARCTIC WHITE. When Registration No. 1431100 is cancelled,
this application will be forwarded for publication.

Serial No. 78919789
9
Opinion by Hohein, Administrative Trademark Judge,
concurring in part and dissenting in part:

While I agree with suspending this appeal with respect
to the issue of likelihood of confusion in view of the
impending cancellation on or about December 3, 2007 of Reg.
No. 1,431,100 for the mark ARCTIC WHITE,1 I would affirm the
requirement for a disclaimer of the word "art" in
applicant's ARCTIC ART mark.
Applicant offers two arguments as to why it believes
the required disclaimer to be inappropriate. First, it
reiterates in its main brief the contention, which it
raised as its sole argument prior to filing its appeal,
that "in the present matter ART does not merely describe
'coated paper for printing.'" Specifically, and with
respect to the various third-party registrations made of
record by the Examining Attorney as support for the
disclaimer requirement, applicant asserts that:
Respectfully, Applicant does not seek to
register its mark for "art paper", "coated art
paper", "good quality paper" or "paper for use
for art"; Applicant seeks to register for "coated
paper for printing." The logical conclusion of
the Examining Attorney's argument is that since
anything can be used in connection with art, ART
merely describes everything. Regardless of the

1 See TBMP §1213 (2d ed. rev. 2004) and TMEP §716.02(e) (5th ed.
2007) (which among other things indicates that a registration
will be automatically canceled three months after the expiration
of the statutory grace period).

Serial No. 78919789
10
quality of Applicant's paper or whether paper can
be used in connection with art, ART is not merely
descriptive of "coated paper for printing".

The Examining Attorney also pointed to a
number of registrations in connection with which
the respective applicants disclaimed ART in
support of his [sic, should be "her"] refusal to
register. .... First, simply because other
applicants disclaimed a portion of their marks
does not obligate Applicant to disclaim the same
portion of its mark. Second, it is not
surprising that the applicants in the cited
registrations disclaimed ART because in the cited
registrations, ART merely described the goods
(i.e., "art paper", "[paper goods, namely,] paper
used for letterpress, offset, gravure and silk-
screen print applications," ...).

As the Examining Attorney notes in her brief, while
applicant "appears to argue that because its recitation of
goods does not include the word 'art,' the word ART is not
descriptive of its goods," it is plainly the case that
several of the third-party registrations, including in
particular Reg. No. 2,055,353 for the mark PARSONS
RENAISSANCE ART PAPER for "paper goods, namely, paper used
for letterpress, offset, gravure and silk-screen print
applications" in which the term ART PAPER is disclaimed,
include a disclaimer of the word "art." "These
registrations," the Examining Attorney properly points out,
"serve to establish the descriptive nature of the word ART
when used in connection with types of paper and to
strengthen the requirement for the disclaimer."
Serial No. 78919789
11
Furthermore, the majority concedes in any event that,
"[i]n the present case, we have no doubt that the word
'art' is merely descriptive of a type of paper (i.e., art
paper)" and I concur that the evidence of record fully
supports such a finding. Moreover, because applicant's
goods are identified as "coated paper for printing" and the
record shows that "art paper" is a type of coated paper
which is particularly suited for printing in that it is
usually a paper of good quality with a high brightness and
a glossy, highly uniform printing surface, it is obvious
that applicant's goods necessarily include art paper as a
type of "coated paper for printing." Inasmuch as it is
clear that the word "art" is merely descriptive of a type
of coated paper for printing known generically as art
paper, such word undeniably is at least merely descriptive
of applicant's goods and therefore, unless its mark is
unitary, the word "art" must be disclaimed in order for the
mark ARCTIC ART to be registrable. Applicant's semantic
argument to the contrary is thus without merit.
Applicant's second argument, apparently added as an
afterthought following the filing of its appeal, is that
its mark is indeed unitary because, as the majority so
finds, "the descriptive significance of the word 'art' is
lost in the mark as a whole." Specifically, the majority
Serial No. 78919789
12
believes among other things that "[t]he mark ARCTIC ART has
an alliterative cadence that encourages potential consumers
encountering the mark to perceive it as a whole." While
admittedly a subjective judgment, to me such an argument
would have more force if, for instance, applicant's mark
were ARCTIC ARTIST for artists' brushes. Here, however, I
find that absent something more, such as the overall
suggestiveness conveyed by the expression LIGHT N' LIVELY
when used as a mark for reduced calorie mayonnaise as in In
re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), the mere
repetition of the "ar" sound of the first syllable of the
word "arctic" fails to unify applicant's ARCTIC ART mark
such that the mere descriptiveness of the word "art" is
lost in the whole.
In this regard, the Examining Attorney persuasively
observes in her brief that:
[J]ust because ARCTIC and ART begin with the same
letter[s] does not make the mark unitary. The
Board in In re Lean Line, Inc., 229 USPQ 781
(TTAB 1986) found the mark LEAN LINE for low
calorie foods not unitary and the requirement for
a disclaimer of LEAN was held to be proper. As
the Board stated, "there is nothing in the record
to suggest that the mere fact that both words
which form the mark begin with the letter 'L'
would cause purchasers to miss the merely
descriptive significance of the term 'LEAN' or
consider the entire mark to be a unitary
expression." Similarly, a consumer encountering
the mark ARCTIC ART in connection with
Applicant's coated paper [for printing] would
Serial No. 78919789
13
perceive the mark as two separate components with
the ART component describing the paper's quality
or use. ARCTIC ART is not a double entendre or
an expression; nor is it connected in any way to
make it unitary. Applicant's mark is not ARCTIC
'N ART but rather ARCTIC ART in which the word
ART is easily separable from the initial word to
describe Applicant's coated paper goods.

This case, as the Examining Attorney accurately adds,
accordingly is strictly analogous to, in particular, Reg.
No. 2,055,353, a third-party registration of record which
involves the mark AURORA ART for "coated offset printing
paper" and which includes a disclaimer of the term "ART."
Nonetheless, the majority further agrees with
applicant that its ARCTIC ART mark "conveys the commercial
impression of 'art' of the 'arctic' because the word 'art'
is a noun modified by the adjective 'arctic,'" finding that
"as shown in the specimen of use, consumers will perceive
applicant’s mark as ARCTIC ART brand premium coated paper,
not ARCTIC brand art paper." While, if applicant's goods
were, for example, mounted prints, photographs or other
images of art or original works of art, its contention
might be plausible, I fail to appreciate how the commercial
impression immediately engendered by the mark ARCTIC ART
can be said to be "art of the arctic" region when such mark
is used in connection with coated paper for printing,
including in particular art paper.
Serial No. 78919789
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Given the fact that arctic paper is characterized as a
kind or grade of coated paper which is particularly suited
for printing, especially as to halftones where definition
and detail in shading and highlights are an essential
consideration, and is usually a paper of good quality, with
a high brightness and a glossy, highly uniform printing
surface, purchasers encountering applicant's mark as used
on the specimen of record would be likely to be immediately
struck by the display of the words "ARCTIC ART" for a
"PREMIUM COATED PAPER" that the word "arctic" suggests in
relation to applicant's goods that they feature or are
characterized by the high brightness or pure white of
arctic ice and snow. Such a commercial impression seems
far more probable, especially with respect to the purchase
of art paper, than one which brings to mind the apparently
unknown genre or category of "art of the arctic." The
latter simply is too speculative given that, tellingly,
nothing in this record even hints that consumers could,
much less would, plausibly think that applicant's coated
paper for printing had something to do with "art of the
arctic." Instead, because combining the words "arctic" and
"art" to form the composite mark ARCTIC ART does not alter,
obscure or otherwise change the merely descriptive
significance of the word "art" in relation to applicant's
Serial No. 78919789
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goods, the requirement for a disclaimer of such word is
proper and I would accordingly affirm the requirement
therefor by the Examining Attorney.2

2 In accordance with the Board's practice, however, the decision
affirming the disclaimer requirement would be set aside and
applicant's mark would be published for opposition if applicant,
within thirty days of the issuance of such decision, elected to
submit the required disclaimer. See Trademark Rule 2.142(g).