Faultless Starch/Bon Ami Co.

Trademark Trial and Appeal Board

Jul 16, 1997

EX (T.T.A.B. Jul. 16, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY
16, 97
Hearing: Paper No. 19
November 14, 1996 EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Faultless Starch/Bon Ami Company
________
Serial No. 74/331,559
_______
J. David Wharton of Shook, Hardy & Bacon for Faultless
Starch/Bon Ami Company
Steven R. Fine, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney)
_______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Faultless Starch/Bon Ami Company seeks registration on
the Supplemental Register for GARDEN CLAW as a trademark for
"hand-operated garden tools, namely cultivator-weeders."1

1 Application Serial No. 74/331,559. This application was
originally filed, on November 16, 1992, seeking registration on
the Principal Register, based on an asserted bona fide intention
to use the mark in commerce. Initially, the Examining Attorney
required a disclaimer, which applicant provided. Registration
was subsequently refused pursuant to Section 2(e)(1) of the
Trademark Act, and when this refusal was made final, applicant
filed an amendment alleging use as of August 31, 1992, and on
Ser No. 74/331,559
2
Registration has been refused by the Trademark Examining
Attorney pursuant to Section 23 of the Trademark Act, 15
U.S.C. 1091, on the ground that GARDEN CLAW is incapable of
identifying applicant's goods and distinguishing them from
those of others.
Both applicant and the Examining Attorney have filed
briefs on the case, and both appeared at an oral hearing
before the Board.2
It is the Examining Attorney's position that GARDEN
CLAW is incapable of distinguishing applicant's garden tools
because it is a generic term for such goods. In support of
this position, he has relied on a definition of "claw" in
Webster's Third New International Dictionary, unabridged,
8 1976--"a gardening tool for loosening soil" and the
following excerpts of articles taken from the NEXIS
database:3

January 12, 1994 filed an amendment to seek registration on the
Supplemental Register.
2 With his brief the Examining Attorney submitted an excerpt of
an article taken from the NEXIS database, explaining that the
article had not previously been made of record because it
appeared after the issuance of the Office action finally
refusing registration on the Supplemental Register. In such
circumstances, the better practice is for the Examining Attorney
to request that the application be remanded in order to make
such material of record. See Trademark Rule 2.142(d). However,
at the oral hearing on this case, applicant stated that it had
no objection to the Board's consideration of this article, and
therefore we deem the article to have been stipulated into the
record.
3 The Examining Attorney had, during the examination of this
application, also made of record excerpts from two articles
which referred to companies which sold a tool called the Garden
Claw. Applicant explained that these companies were related to
Ser No. 74/331,559
3
...When plants are quite dead and you
are ready to pull out potatoes, it is
wise to go about the task rather
carefully, using such hand tools as
claws or trowels rather than garden
forks or spades...
"The Washington Post," July 30, 1987
"HOME IMPROVEMENT GUIDE Be sure to dig
up the right tools before going to your
garden (headline)
..."Claw for cultivating tight
areas...."
"The Atlanta Journal and Constitution,"
Sept. 17, 1992
...trained pigs or dogs sniff them out
and paw at the ground where they are
located. A harvester comes after the
animals with a garden claw and digs up
the truffles....
"Austin American-Statesman, " July 13,
1995
'Twin Peaks': Splash on Both Sides of
Atlantic; Who Killed Laura Palmer? Stay
Tuned! (headline)
...Is the show's second Laura Palmer
diary--the one being hidden by Harold,
the shut-in who raises orchids, gets
meals on wheels and scratches divots in
his face with a garden claw--really a
copy of the Laura Palmer diary written
by David Lynch's daughter....
"The New York Times," Nov. 8, 1990
Good Deed Etched in Cemetery (headline)
...a second, smaller group labored amid
the toppled headstones with hoes and
rakes and garden claws, clearing away
the brush and trash....
"Chicago Tribune," Oct. 14, 1985
The Examining Attorney has also pointed to a
registration owned by O. M. Scott & Sons, which includes in

applicant, and that the articles referred applicant's own use of
GARDEN CLAW as a trademark. The Examining Attorney has not
Ser No. 74/331,559
4
its identification of hand tools, namely lawn and garden
implements, "claws." The Examining Attorney asserts that
this identification by a company which sells lawn and garden
tools shows that "claw" is understood by the trade as the
name of a garden tool.
To counter this evidence, applicant has submitted
definitions of "claw" taken from five dictionaries,
including the unabridged Random House Dictionary of the
English Language,4 Webster's New World Dictionary,5
Webster's II New Riverside University Dictionary,6 and The
American Heritage Dictionary.7 These dictionaries all bear
copyright dates subsequent to the 1976 date of the Webster's
dictionary on which the Examining Attorney relies. None of
these dictionaries defines "claw" as a gardening tool. As a
result, applicant asserts that the definition cited by the
Examining Attorney must be considered to be obscure.
Moreover, applicant has submitted the affidavit of D.
Kevin Houlihan, the Group Merchandising Manager for Cotter &
Co., the largest member-owned wholesale distributor of
hardware and related products in the world. Mr. Houlihan
stated that for nine years he has been involved with the
marketing of lawn and garden products, and that "the name

referred to these articles in his brief.
4 2d ed., 8 1987.
5 2d coll. ed., 8 1984.
6 8 1988.
7 2d coll. ed., 8 1985.
Ser No. 74/331,559
5
Garden Claw is associated exclusively with [applicant's]
product"; that "there is no other tool or implement to which
the name GARDEN CLAW is applied which is marketed in the
United States"; and that "the name Garden Claw is not now
and to my knowledge never has been generic for any type of
tool or implement which has ever been marketed in the United
States."
A term which is generic is not capable of
distinguishing one party's goods from those of another, and
therefore is not registrable on the Supplemental Register.
The burden of showing that a proposed trademark is generic
is on the Patent and Trademark Office, and must be made by a
substantial showing by the Examinng Attorney of genericness,
based on clear evidence of generic use. In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987). Moreover, the critical
issue in genericness cases in whether members of the
relevant public primarily use or understand the term sought
to be protected to refer to the genus of goods or services
in question. H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986), Thus, we must determine whether the
primary meaning of GARDEN CLAW to those who would use or
purchase hand-held cultivator-weeders, e.g., those who do
gardening, is that of a name of a cultivator-weeder.
Ser No. 74/331,559
6
Applicant points out that the two articles referring to
"garden claw" which were of record at the time it filed its
brief dealt with a television show and the good deed
involved in cleaning up a cemetery. We agree with applicant
that these articles, as well as the article about gathering
truffles submitted with the Examining Attorney's brief, do
not show that those who garden, the relevant purchasers of
the goods, would view GARDEN CLAW as a generic term for a
cultivator-weeder.
We recognize that the Examining Attorney has also
submitted a dictionary definition, two articles which are
directed to gardening activities, and a registration, all of
which use "claw" as a generic term for a gardening tool.
The Examining Attorney himself recognizes that this evidence
is limited:
The term GARDEN CLAW is not widely used,
nor is the term CLAW as such widely
used, to designate a variety of garden
tool That is the conclusion from
reviewing the available LEXIS/NEXIS
evidence. ...
The evidence of record is not, to be
sure, overwhelming. And one may choose
to regard it as merely insufficient. ...
Final Office action, mailed March 17,
1995.
However, the Examining Attorney relies heavily on the
Webster's unabridged dictionary definition, essentially
asking how it can be ignored.
Ser No. 74/331,559
7
The dictionary definition cited by the Examining
Attorney certainly shows that at the time the dictionary was
published in 1976 the editors considered "claw" to mean a
kind of gardening tool. We are, however, troubled by the
fact that only the Webster's unabridged dictionary ascribes
such a meaning to the term, while five other dictionaries,
including the Random House unabridged, and two other
Webster's dictionaries, do not. Particularly troubling is
the fact that these other dictionaries were published
subsequent to the Webster's unabridged.
Moreover, if "claw" were perceived by the relevant
public as the generic term for a gardening tool in 1976, at
the time the Webster's unabridged dictionary was published,
we find it somewhat odd that the Examining Attorney was
unable to submit any generic usages in newspaper articles or
catalogs from that time and that, in the twenty years since
that publication, the Examining Attorney has uncovered only
two articles about gardening, from 1987 and 1992, in which
"claw" was used, and one registration in which the
registrant identified its gardening tool as a "claw" at the
time the underlying application was filed in October 1992.
If such tools were available in 1976, to the extent that
they were referenced in a dictionary definition at that
time, one would assume that, if the relevant public
recognized this meaning, there would be more references to
Ser No. 74/331,559
8
"claw" in the subsequent 20-year period than just the two
articles and the one registration that the Examining
Attorney has made of record. See In re Volvo White Truck
Corp., 16 USPQ2d 1417 (TTAB 1990).
Concomitant with the dearth of evidence of generic
usage of "claw" for a hand-operated weeder-cultivator is the
affidavit of one in the trade, knowledgeable about gardening
tools, who has testified that GARDEN CLAW is not and has
never been a generic term for any type of tool or
instrument.
On this record,8 we are compelled to agree with
applicant that the Examining Attorney has not estabished
that "claw," and consequently "garden claw,"9 would be
recognized by the relevant public as the generic term for
hand-operated cultivator-weeders. In view thereof, we find
that the Patent and Trademark Office has not met its burden

8 We wish to make it clear that our decision herein rests, as
it must, on the record presented by the Examining Attorney and
applicant. A different result might obtain if evidence of
competitors' usages were to be submitted in the context of an
inter partes proceeding.
9 Applicant has argued that even if the Examining Attorney's
evidence showed that "claw" is a generic term, it would be
insufficient to prove that "garden claw" is generic. However,
the Examining Attorney has shown that gardening tools are
referred to generically by using "garden" as a prefix, e.g.,
garden rake, garden spade. Thus, if "claw" were, in fact, shown
to be generic for a weeder-cultivator, the addition of "garden"
would not prevent the compound term GARDEN CLAW from being found
generic. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110 (Fed. Cir. 1987) (genericness may be shown by evidence that
the separate words joined to form a compound have a meaning
identical to the meaning common usage would ascribe to those
words as a compound).
Ser No. 74/331,559
9
of making a substantial showing by clear evidence that
GARDEN CLAW is incapable of distinguishing applicant's goods
from those of others.
Decision: The refusal of registration is reversed.
R. F. Cissel
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board