General Hospital Supply Corp.

Trademark Trial and Appeal Board

Apr 13, 2004

No. 76210800 (T.T.A.B. Apr. 13, 2004)

Mailed: April 13, 2004
Paper No. 12
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re General Hospital Supply Corporation
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Serial No. 76210800
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Wesley W. Whitmyer, Jr. of St. Onge Steward Johnston &
Reens LLC for General Hospital Supply Corporation.
Karen K. Bush, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
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Before Seeherman, Hohein and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
General Hospital Supply Corporation has applied to
register the mark SUPER ABSORBENT for goods identified, as
amended, as "plastic lining, separating and dividing
materials for use during sterilization of medical and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76210800
2
surgical implements."1 Applicant has disclaimed exclusive
rights to the word ABSORBENT. 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 goods. It is essentially the
Examining Attorney's position that SUPER ABSORBENT is
merely descriptive of applicant's plastic materials because
the mark immediately conveys to consumers that the goods
are highly absorbent. Traversing the refusal of
registration applicant in the alternative has asserted that
its mark has acquired distinctiveness, and has sought
registration pursuant to Section 2(f) of the Act. This
claim has been rejected by the Examining Attorney. When
the refusal to register was made final, applicant filed the
subject appeal.
The appeal has been fully briefed.2 Applicant did not
1 Application Serial No. 76210800, filed February 15, 2001, and
asserting first use and first use in commerce as of April 2000.
2 On September 9, 2003, one day before filing its reply brief,
applicant requested that its application be amended to change its
mark from SUPER ABSORBENT to SUPER ABSORBENT STEAM-N-LENE. The
Board previously issued an action refusing to remand the
application for consideration of this amendment because the
request was filed at too late a stage of the proceeding.
Accordingly, we consider only the registrability of SUPER
ABSORBENT. However, we note that even applicant has acknowledged
that SUPER ABSORBENT STEAM-N-LENE is a different mark from SUPER
ABSORBENT. ("Applicant has used both marks in the sales of the
goods...." reply brief, p. 1). See Trademark Rule 2.72(a)(2)
(the drawing of the mark may be amended only if the proposed
amendment does not materially alter the mark.)
Ser No. 76210800
3
request an oral hearing.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It does not have to
describe every one of these. It is sufficient if it
describes a single, significant quality, feature, function,
etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB
1985). Moreover, the question is not decided in a vacuum
but in relation to the goods on which, or the services in
connection with which, it is used. Id.
Applicant has explained that:
...implements to be sterilized, such as
surgical basins, are stacked with
Applicant's "SUPER ABSORBENT" plastic
dividing material inserted between each
basin and then the entire stack is
wrapped in a water repellant paper
material. This forms a "pack" whereby
the basins are separated from each
other within the pack by Applicant's
plastic dividing material. The pack is
then placed, e.g., into a steam
sterilizer where it is subjected to
steam and then is treated with heated
air in order to dry it. Importantly,
by separating the implements with
Applicant's SUPER ABSORBENT plastic
dividing material, steam and heated air
may adequately reach all surfaces for
proper sterilization and drying. Also,
while Applicant's plastic dividing
material absorbs moisture, it must also
effectively dry during the heating
cycle to prevent contamination such as
Ser No. 76210800
4
the growth of bacteria that arises with
packs that are not completely dried.
Response filed December 26, 2001.
There is no question that one of the characteristics
of applicant's goods is that they are absorbent, and that
this absorbency feature is used during the sterilization
process in which the product is used. Applicant has even
acknowledged that "the mark 'SUPER ABSORBENT' ... refers to
a characteristic of the product, i.e. its absorbency,"
although applicant then goes on to say that the mark does
not refer "to the name of the goods, which is described
above as plastic lining, separating and dividing materials
used during sterilization." Brief, p. 6. It is
applicant's position that marks containing the word SUPER
are merely descriptive only if SUPER is combined with a
word or words comprising the name of the goods with which
it is used. "Applicant further respectfully submits that
where the term "SUPER' is used in combination with a
characteristic or quality of a product, rather than the
name of the product, the entire mark is held to be
suggestive rather than descriptive." Brief, p. 5.
Applicant apparently bases its position on language in
In re Occidental Petroleum Corp., 167 USPQ 128 (TTAB 1970),
a four-paragraph decision (the first two paragraphs simply
Ser No. 76210800
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indicating the mark and goods in the application, and the
ground for refusal) in which the Examining Attorney relied
solely on dictionary definitions to prove the
descriptiveness of SUPER IRON for a soil supplement. The
Board's entire analysis was:
The difficulty with the above
approach, however, is that it takes
some roundabout reasoning to make a
determination of what the mark actually
describes. In our opinion, "SUPER
IRON" merely suggests that the product
contains a larger amount of iron than
most soil supplements or that this
iron, again an ingredient, is superior
in quality to iron found in other soil
supplements. This, in our opinion, is
distinguishable from the situation
where the superlative term "super" is
combined with the name of an
applicant's goods.
In other words, the Board found that a two-step process was
required to determine the nature of the applicant's goods,
and as a result the mark was suggestive.
Applicant has not discussed this point in the
analysis, but has focused on the last sentence which
distinguishes the situation where the term SUPER is
combined with the name of the goods, and has assumed from
this statement a rule as to when a SUPER mark will be found
to be merely descriptive, and when it will be found to be
distinctive.
Ser No. 76210800
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Although in many cases marks which consist of SUPER
and the name of the goods have been found to be merely
descriptive, that does not mean that the converse is true,
i.e., that marks which combine SUPER and a characteristic
of the goods are not merely descriptive. On the contrary,
there are several decisions which have found such marks to
be merely descriptive. See, for example, Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ
361 (CCPA 1972) (SUPER BLEND held merely descriptive of
motor oils); In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995) (SUPER BUY found laudatory and hence merely
descriptive of cigars, pipe tobacco, chewing tobacco and
snuff); In re General Tire & Rubber Co., 194 USPQ 491 (TTAB
1977) (SUPER STEEL RADIAL merely descriptive of tires).
Applicant has also argued that, because its plastic
material must be dry at the end of the sterilization
process, the fact that it is absorbent is not a significant
characteristic of the goods. We are not persuaded by this
argument. As noted above, it is not necessary, in order to
find a mark to be merely descriptive, that it describe each
characteristic of the goods. In this case, applicant has
acknowledged that its goods function to absorb moisture
during the sterilization process.
Ser No. 76210800
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The Examining Attorney has submitted excerpts taken
from various websites which use the term "super absorbent"
to describe goods ranging from incontinent pads to litter
pan liners to moss plant basket liners:
Dignity Plus Super Absorbent Liners
www.aarppharmacy.com
[listed under "Cage & Pan Liners"]
Techboard Ultra
An improved, super-absorbent cage board
for less frequent changings
www.ssponline.com
Duro-Med Super-Absorbent Disposable
Liners
Designed with 500cc capacity to reduce
urine odor and skin irritation
Can be used with reusable incontinent
pant or regular underwear
www.clorders.com
The freshly picked moss is dried and
compressed for ease of use. Add water
and the moss will literally expand
before your eyes, like magic, into a
super absorbent basket liner. In fact
Just Moss liners are the only basket
liners that absorb so much water and
retain that water, helping maintain
your plants in top condition.
www.justmoss.net
These references, along with the dictionary
definitions of "super" ("especially, extremely: a super
accurate missile; was super careful"),3 demonstrate that
3 We grant the Examining Attorney's request that we take
judicial notice of this definition from the American Heritage
Dictionary of the English Language, 4th ed. The Board may take
judicial notice of dictionary definitions. University of Notre
Ser No. 76210800
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"super absorbent" is a recognized phrase to indicate a
product that has a high degree of absorbency. Although in
other contexts "super" may have a connotation of "puffery,"
a vague, desirable characteristic or quality, this is not
the case when it is used as part of the phrase "super
absorbent." See In re Consolidated Cigar Co., supra (the
evidence demonstrates that the expression "SUPER BUY" "has
been widely adopted in common language as referring to
bargains of exceptional note).
Applicant attempts to distinguish the usages of "super
absorbent" in the website evidence by asserting that those
products are designed to absorb as much fluid as possible
and then be disposed of, while applicant's liners do not
retain the fluid they absorb, but instead are dry at the
end of the sterilization process. It is not clear to us
that all of the products referenced in the Internet
evidence act as applicant contends. See, for example, the
moss plant liners. In any event, this is a distinction
without a difference. It is the absorbency of the product
to which "super absorbent" refers, not whether the product
is disposable after fluid is absorbed. Consumers,
including consumers of medical products such as
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. 76210800
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applicant's, will understand, upon viewing applicant's mark
in connection with its goods, that SUPER ABSORBENT
describes a characteristic of the product, namely, that
during the point in the sterilization process that the
goods absorb fluid, they do this extremely well, i.e., they
are SUPER ABSORBANT.
In view of the foregoing, we find that applicant's
mark is merely descriptive of its goods.
Applicant has also asserted that, if its mark is found
to be merely descriptive, it has acquired distinctiveness.
In support of this claim, applicant has submitted two
declarations by Phillip Davis, its president. Mr. Davis
has asserted that as of December 13, 2000, applicant spent
approximately $17,500 in advertising and promoting its
goods under the mark SUPER ABSORBENT. A close look at the
breakdown of these expenditures shows that much of it (over
$14,000) was spent to mount a booth at a trade show in
August 2001, including $954 on an "upgrade" for the booth
and $784 for booth furnishings (e.g., a carpet, counter
drapings, a side chair and a bar stool). $4,100 was spent
to procure a graphic mural for the booth, although it is
not clear how or whether the mark appeared on the mural.
Brochures bearing the mark SUPER ABSORBENT were distributed
at the booth; an invoice shows that $3,150 was spent to
Ser No. 76210800
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produce 3,000 brochures. In the second quarter of 2001
sales of SUPER ABSORBENT products amounted to $98,595, and
from March 1, 2002 through May 31, 2002, sales were
$86,742.4 Applicant has also submitted form statements from
four of applicant's customers (hospitals) and two of its
manufacturers' representatives.
The customer statements consist of the following
paragraph:
I have been a customer of General
Hospital Supply Corporation for ___
years and have purchased from them such
products as Trayliners and Basin
Dividers for steam and gas
sterilization which bore the trademark
"SUPER ABSORBENT" and I have come to
look upon this trademark as a symbol
identifying the products of General
Hospital Supply Corp. only, and not for
any other company in this field.
In each form, the declarant stated that the party was a
customer for three years, and the forms were signed between
August 28, 2001 and October 3, 2001. Interestingly,
applicant does not claim use of its mark prior to April
2000, so although the parties had been customers of
applicant for three years at the time the statements were
signed, they would have been purchasing the SUPER ABSORBENT
4 In its reply brief applicant has provided gross sales figures
for 2001, 2002 and the first half of 2003. This evidence was not
properly made of record, and has not been considered. See
Trademark Rule 2.142(d).
Ser No. 76210800
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products for only 16-17 months. The sales made to three of
these customers between March 1, 2002 and May 31, 2002 were
in the amounts of $7,780 to one customer, $3,164 to another
and $252 to a third.
The manufacturers representatives' statements include
the following two paragraphs:5
It is my understanding that the mark
SUPER ABSORBENT has acquired in the
trade the meaning of Trayliners and
Basin Dividers for steam and gas
sterilization products produced only by
General Hospital Supply Corporation.
Many of my customers ask for Trayliners
and Basin Dividers for steam and gas
sterilization products by the mark
SUPER ABSORBENT and expect that all
products marked with the SUPER
ABSORBENT mark will come from the same
source and are of equal quality with
all other products from that source.
Both of these statements were signed at the end of August
2001, so at that time the representatives could not have
been selling SUPER ABSORBENT products for more than 16
months.
The burden is on applicant to demonstrate acquired
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 101 (Fed. Cir.
5 The statements also say that the signer understands the mark
SUPER ABSORBENT on the products to indicate products produced by
General Hospital Supply Corporation. However, since the
declarant is a representative of applicant, that would not be
surprising.
Ser No. 76210800
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1988). We find the evidence submitted by applicant to be
inadequate. Applicant has used its mark for a relatively
short period of time, not even the five years of
substantially exclusive and continuous use in commerce
which may constitute prima facie evidence of
distinctiveness. Its evidence of advertising and promotion
is extremely limited, being confined to an exhibit at a
single trade show and the production of 3,000 brochures.
Nor do we find the form statements by only four customers
and two manufacturers representatives to be persuasive.
Given the widespread use of the term "super absorbent" to
describe materials which are very absorbent, the evidence
submitted by applicant is simply inadequate to demonstrate
that SUPER ABSORBENT has acquired distinctiveness as a
trademark for applicant's identified goods.
Decision: The refusal to register SUPER ABSORBENT on
the ground that the mark is merely descriptive is affirmed.